Dispute Resolution

The European Union Intellectual Property Office (EUIPO) recently ruled against McDonald’s in a hard fought legal battle against Irish fast food chain ‘Supermac’s’.
(https://euipo.europa.eu/eSearch/#details/trademarks/000062638)

McDonald’s position
The legal battle started when Supermac’s wanted to expand its 116 outlets in Ireland and Northern Ireland across Europe. McDonald’s argued that with its global brand, Supermac’s would benefit from the “distinctive character and repute” of its Big Mac brand. McDonald’s filed evidence of packaging, advertising campaigns, statements from executives, reference to its Wikipedia page and materials from its website showing the use of its Big Mac branding across Europe. All of that was done in an attempt to convince the EUIPO that McDonald’s should be entitled to retain their Big Mac trade mark and Supermac should be prevented from expanding in Europe using the name ‘Supermac’.

Supermac’s position

Supermac’s argued that the two businesses have traded without confusion between the brands in Ireland for 40 years and in Northern Ireland for 11 years. They also claimed that their business “is iconic in Ireland and beloved of Irish people, many of whom now live abroad, including across Europe” and that there was a real demand from Irish people now living in Europe for the expansion.

Their European expansion would cater to this consumer demand and was simply reflective of a growing business.

EUIPO decision
In a decision that surprised many, the EUIPO ruled in favour of Supermac’s deciding that McDonald’s had failed to prove the Big Mac trade mark was put to ‘genuine use’. The EUIPO’s view was that the evidence filed by McDonald’s was not sufficient and additional information other than advertising campaigns, packaging and statements from McDonald’s executives would be required to advance or appeal the decision. The Big Mac trade mark held by McDonald’s in Europe was revoked.

Supermac and McDonald’s responses
Given McDonald’s global presence, its loss in this case has been seen by many brand owners as wrong but by others as a landmark ruling against ‘trade mark bullying’ – a term used to describe global brands dominating markets and preventing smaller businesses competing through what are regarded by some as illegitimate trade mark challenges such as this. Pat McDonagh of Supermac’s released a statement following the recent ruling: “This is a victory for all small businesses. It prevents bigger companies from hoarding trademarks with no intention of using them.”

Not surprisingly, McDonald’s plan to appeal the EUIPO’s decision and stated “We are disappointed in the EUIPO’s decision and believe it did not take into account the substantial evidence submitted by McDonald’s proving use of our BIG MAC mark throughout Europe, we intend to appeal the decision and are confident it will be overturned by the EUIPO Board of Appeals. McDonald’s owns full and enforceable trademark rights for the mark “BIG MAC” throughout Europe.”

Given McDonald’s well known presence across the globe and its likely ability to produce more evidence suggested by EUIPO; it’s very possible that EUIPO’s decision on appeal may change. We will keep you updated – whether your interest is more on the trade mark or fast food sides – or indeed both.

Elisha Hale

Elisha Hale

Trainee Solicitor at Brodies LLP
Elisha Hale is a Trainee Solicitor within the Corporate Team and is based in Glasgow.
Elisha Hale