McDonald’s has been deprived of the ‘Big Mac’ trade mark in a ruling of the European Union Intellectual Property Office earlier this year. The American giant was challenged by Irish fast food chain Supermac’s. The company sued McDonald’s on the grounds that the patented use of terms ‘Mc’ and ‘Big Mac’ is hindering its expansion across Europe.
EU Intellectual Property ruling evidences a willingness to challenge powerful multinationals. Photograph: Wikipedia.
Supermac persuaded the European Union Intellectual Property Office (EUIPO) to cancel McDonald’s use of the ‘Big Mac’ trade mark, opening the way for the firm to expand across Britain and continental Europe. The Irish fast food chain has formally submitted a request to the EUIPO to cancel the use of the Big Mac and Mc trade marks that McDonald’s has registered in certain classes.
‘We’re delighted. It’s a unique victory when you take on the golden arches and win,’ McDonagh, Supermac’s Managing Director, said. ‘This is a victory for all small businesses. It prevents bigger companies from hoarding trade marks with no intention of using them.’
Supermac’s asked the EU regulator that this take effect immediately on the basis that McDonald’s is engaged in ‘trade mark bullying; registering brand names which are simply stored away in a war chest to use against future competitors’.
"This means that if any McGrath, McCarthy or McDermott with a business idea uses their name in the title of that business or product the chances are McDonald's already own the trade mark and you can probably expect a knock on the door from them," McDonagh stated.
In February 2017, McDonald’s hit the family-owned company with a 41-page objection against its plans to use the Supermac’s name in Europe stating that it would ‘take unfair advantage of the distinctive character and repute of trade marks previous won’ by the global company.
The US firm partly based its objection on already secured trade marks for its products such as the ‘Big Mac’ and ‘Chicken McNuggets’, claiming introducing Supermac’s into the market would cause confusion, an argument that was disputed by the appellants as being ‘two completely different things’.
According to Willajeanne McLean, a law professor, the American chain does not typically lose in the area of trade mark law. In 1993, McDonald’s stopped a dentist from New York from providing services under the name ‘McDental’. Blocking competition did not stop there because, in 2016, a Singapore company was stopped from registering ‘MacCoffee’ as an EU trade mark.
Similarly, this wasn’t the first meeting of the fast food chains in court. In 2014, MacDonald’s objected against the plans of Supermac’s to expand in Europe as it would lead to confusion among consumers due to the resemblance of prefixes. Although Supermac’s was defeated, the decision was quite surprising. Namely, it was concluded that the Irish brand is allowed to use its trade name in the EU, however, a right to sell food under this name is excluded.
The Spanish-based EUIPO ruled that McDonald’s had not proven genuine use of Big Mac, which it trade marked in 1996, as a burger or restaurant name. Under EU law, genuine use of a trade mark exists where it is used to guarantee the identity of the origin of goods. EUIPO found that evidence submitted by McDonald’s was “insufficient” to establish genuine use of the trade mark, resulting in its revocation. The body found that McDonald’s would bear the costs for revocation. Mr McDonagh said the trade mark decision represents a victory for small businesses all over the world. ‘We knew when we took on this battle that it was a David versus Goliath scenario but, just because McDonald’s has deep pockets, and we are relatively small in context, doesn’t mean we weren’t going to fight our corner’, he claimed.
Although the judgement overwhelmed Supermac’s with joy, the eventual victory is yet to come. Namely, there is still a possibility for McDonald’s to appeal the decision. Another threat to the victory of the Irish company is Brexit. The cancellation of McDonald’s trade mark will no longer apply in the UK, if the country leaves the EU without a trade deal. In such a scenario the EU jurisdiction will have no effect in Britain.