OWNING A PREFIX: THE THIN LINE BETWEEN TRADEMARK RIGHTS AND MONOPOLY
- Trishla Jain
- Sep 25, 2025
- 7 min read
INTRODUCTION:
Can two letters really spark a full-blown trademark dispute? When companies try to claim exclusive rights over a prefix, they are not just protecting a brand - they are testing how far trademark law can stretch toward monopolising everyday language. But what happens when a prefix, part of common culture and widely recognisable yet never tied to a single source, is claimed exclusively by one company, preventing others from using it even in unrelated contexts? This raises a simple yet significant question: can a business claim exclusive rights over a prefix, especially one with cultural or linguistic roots that extend beyond any single brand?
Around the world, businesses have sought to register and defend such elements of their brand, sometimes successfully, sometimes not. The latest example in India is a dispute between two food companies over the use of the prefix “Mc.”
THE MCPATEL DISPUTE[1] - A BRIEF OVERVIEW:
McPatel Foods Private Limited, based in India, applied for registration of the trademark “McPatel” under Class 30, which covers food products.’
McDonald’s opposed the application, on the grounds that:
· Since the 1970s, the “Mc” prefix has been widely used across a well-known series of its trademarks globally, and since the mid-1990s in India.
In “McPatel,” the prefix “Mc” is the most dominant and distinctive part, while “Patel” and “Foods” are just generic or descriptive.
Use of the prefix “Mc” by another company could create consumer confusion and dilute the distinctive character of their existing brand family.
McPatel’s position is that the “Mc” prefix originates from Gaelic, meaning “son of,” and is widely used as part of surnames in various cultures. They argue that their brand identity is independently developed and not intended to mislead or benefit from the reputation of the other party’s marks.
The dispute is being heard before the Ahmedabad Commercial Court, with related trademark registry proceedings likely to remain pending until a judicial determination is made.
THE CONCEPT OF A “FAMILY OF MARKS” AND “SERIES MARKS”:
In trademark law, the idea of a “family of marks” extends the protection of a single distinctive element to a whole group of related marks. These are not just isolated registrations but a set that shares a common feature - often a prefix, suffix, or syllable which consumers associate with one source. Over time, that shared element can itself become a source identifier, much like a logo or colour scheme.
A series mark, on the other hand, is a procedural mechanism that allows multiple related trademarks to be registered under a single application. The marks must be substantially similar, differing only in minor, non-distinctive details.
Under India’s Trade Marks Act, 1999, Section 15[2] permits registration of trademarks as a series, provided the goods or services are consistently described and the differences between marks are limited to non-essential details such as colour or descriptiveness. Recognition of a family of marks comes from consistent use and consumer association, whereas a series mark is a filing convenience granted at the Registrar’s discretion.
Together, these concepts broaden brand protection: not only can a single mark be safeguarded, but related variants also gain the benefit of that association. Still, the recognition of these rights depends heavily on whether the public actually connects the shared element with a single commercial source - a link that usually comes from consistent and long-standing use.
INDIAN TRADEMARK LAW AND PREFIX PROTECTION:
Under the Trade Marks Act, 1999, a trademark must be distinctive - either inherently or through use - and must not be likely to cause confusion with an earlier mark. Descriptive or generic terms cannot be monopolised unless they have acquired distinctiveness through substantial and exclusive use.
The Act also recognises “well-known marks” under Section 2(zg)[3], which receive broader protection against unauthorised use, even in unrelated goods or services. In the context of prefixes, if a company can prove that a prefix has become a distinctive identifier of its goods in India, it may claim rights over it as part of a family of marks.
Courts in India have taken a contextual approach to assessing such claims. They consider:
The marks’ visual, phonetic, structural, and conceptual similarity.
The nature of the goods or services.
The trade channels and consumer base.
Evidence of actual confusion or likelihood of confusion.
Whether the party adopting the mark has acted in good faith.
However, when the common element is culturally significant or widely used outside a single brand’s influence, courts have been cautious in granting exclusive rights.
INDIAN PRECEDENTS ON PREFIX PROTECTION:
Starbucks Corporation v. Sardarbuksh Coffee & Co.[4]: The Delhi High Court observed phonetic and visual similarities between “Starbucks” and “Sardarbuksh,” leading to minor changes being ordered for the latter’s branding. The decision highlighted that the court looked at the dominant elements of each mark and whether those could mislead consumers, rather than applying a rule against similar prefixes.
Infosys Technologies Ltd. v. Jupiter Infosys Ltd.[5]: The court ruled that the impression that the mark as a whole creates must be the main focus of the similarity assessment. Isolating a prefix or suffix without considering the rest of the name can produce misleading conclusions.
Amar Singh Chawal Wala v. Shree Vardhman Rice and Genl. Mills[6]: In this case, the plaintiff was able to show it had developed a family of “QILLA” marks - “GOLDEN QILLA,” “LAL QILLA,” “NEELA QILLA.” The court accepted this as prima facie evidence of a family of marks because the prefix was consistently used across products, and consumers identified it as part of the brand identity.
Mankind Pharma Ltd. v. Ultrakind Health Care & Ors.[7]: The Delhi High Court recognised the plaintiff’s family of “KIND” marks, reinforcing that if consistent use and consumer association can be shown, a common element may receive broader protection.
INTERNATIONAL PERSPECTIVES:
United States: In the U.S., courts recognize the idea of a “family of marks”, but the burden is on the owner to prove that consumers identify the shared element as a single source indicator. Merely using a common term across different marks is not enough. The USPTO also does not permit “series mark” applications - each variation must be filed separately.
United Kingdom: The UKIPO has recently announced that it plans to phase out the system of “series” trademark filings, with the change expected to take effect in late 2025. Although existing series registrations will remain valid, future applicants will need to file each variation as a separate application. This change aligns the UK with international norms and aims to simplify the system, as the series regime was found to be complex and often misunderstood.
Australia: Unlike the U.S. and soon the UK, Australia still allows series trademarks under Section 51 of the Australian Trade Marks Act 1995[8]. Marks can be filed together if they closely resemble each other and differ only in minor respects, such as numbering, place names, or colour. This system is intended to save time and cost for applicants while still ensuring that the marks resemble each other closely enough to be seen as related.
RISKS OF OVERREACH IN PREFIX PROTECTION:
While the “family of marks” safeguards an established brand series - it can be misused. If not applied carefully, it could lead to:
Market Entry Barriers: New businesses, especially small and regional ones, might find themselves unable to register or use a name containing a common prefix, even if they operate in different market segments.
Dilution of Linguistic Freedom: In languages where certain prefixes have historical, cultural, or familial significance, granting exclusivity could unfairly limit expression and naming traditions.
Reduced Consumer Choice: If too many terms are locked up through aggressive trademark enforcement, it can reduce the variety of brands available to consumers and limit competition.
BRAND PROTECTION AND FAIR COMPETITION:
A balanced legal approach must consider the following:
Evidence of Distinctiveness: Courts should require clear proof that the prefix itself - not just the full mark - has acquired distinctiveness and consumer recognition as a source indicator.
Contextual Similarity Analysis: Each case should be judged on the overall impression of the marks, including differences in the accompanying words, logos, colours, and the nature of the goods or services.
Cultural and Linguistic Factors: Where a prefix has broader linguistic or cultural meaning (e.g., surnames, religious titles, geographic references), exclusivity should be granted only in narrow, clearly justified circumstances.
Good Faith Adoption: If a company can prove that it adopted a mark in good faith based on its corporate name, location, or founder’s name - and not with the intent to ride on another’s reputation.’
THE MCPATEL CASE IN CONTEXT:
From a purely legal standpoint, the McPatel dispute raises questions that are central to Indian trademark jurisprudence:
Can a common linguistic prefix like “Mc” be treated as the dominant element in every instance, regardless of the rest of the mark?
How should the law distinguish between genuine cases of confusion and mere phonetic overlap?
Should a globally recognised family of marks receive extended protection in India even when the contested mark has local origins and different market positioning?
The answers will not only determine the outcome for the parties involved but could also shape the boundaries of prefix protection in India for years to come.
CONCLUSION:
The law must walk a fine line between protecting brand distinctiveness and preventing monopolisation of common language elements. Prefixes, by their nature, are building blocks of words and while some may become strongly associated with a particular brand, others remain part of the shared vocabulary of commerce and culture.’
A well-calibrated approach ensures that businesses can protect the goodwill they have built without closing the door to fair market participation by others. That balance is not just good for legal consistency - it’s good for competition, innovation, and consumer choice.
The McPatel dispute serves as a timely reminder that in trademark law, as in language itself, context matters. Exclusive rights over a prefix should be granted - but only when it’s earned, not simply claimed.’
Trishla Jain
Associate
References:
[2] TRADE MARKS ACT, 1999: https://ipindia.gov.in/writereaddata/Portal/ev/TM-ACT-1999.html.
[3] Supra 1.
[4] Starbucks Corporation v. Sardarbuksh Coffee & Co.: CS (COMM) 1007/2018;
[5] Infosys Technologies Ltd. v. Jupiter Infosys Ltd. (2006): AIR 2011 SC 500 (2010) 13 SCC 457.
[6] Amar Singh Chawal Wala v. Shree Vardhman Rice and Genl. Mills: SLP (c) No. 21594 of 2009;
[7] Mankind Pharma Ltd. v. Ultrakind Health Care & Ors.: 2018 SCC OnLine Del 9678;
[8] TRADE MARKS ACT 1995: https://www.austlii.edu.au/cgi-bin/viewdb/au/legis/cth/consol_act/tma1995121/.
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