Gemma Boucher [pictured left] and Fiona McBride, trade mark attorneys at European intellectual property firm, Withers & Rogers LLP write
On 11 January 2019, the European Intellectual Property Office (EUIPO) revoked McDonald’s trade mark for ‘Big Mac’.
This left the way open for Irish fast-food chain, Supermac, to market its offering under its ‘Supermac’ brand name in the UK and EU.
But will this ruling be the end of the matter? .. Fiona McBride -right
Supermac’s owner, Pat McDonagh, gained the nickname ‘Supermac’ as a teenager after winning a football match in the late 1960s.
It was an unexpected win for McDonagh’s team and history appears to have repeated itself in this legal dispute with McDonald’s.
Supermac applied for an EU-wide trade mark to coincide with its planned expansion into the UK and EU markets. However, the fast-food giant, McDonald’s, objected to the application, stating that ‘Supermac’ is too similar to its own trade mark, ‘Big Mac’ and customers might confuse the two.
In response, Supermac sought to cancel McDonald’s EU registration for ‘Big Mac’ on the grounds that the mark had not been used sufficiently in the marketplace, which is a requirement under EU trade mark law.
To remain valid, a registered trade mark must have been used for genuine, commercial reasons, in relation to the sale of goods and services, in the past five years.
Despite providing some evidence of use, the EU Intellectual Property Office (EUIPO) decided it was insufficient and McDonald’s ‘Big Mac’ registration was revoked.
In reaching its judgement, the Cancellation Division at the EUIPO said the evidence was weak, as the affidavits provided were signed by employees of McDonald’s and the Wikipedia article submitted could potentially have been edited by a member of the public.
There was also little evidence supporting the sales and turnover figures claimed in the affidavits and no evidence was provided of actual sales occurring.
For brand owners, many lessons can be learned from this case. First and foremost, it is important that all existing trade marks are used regularly in the relevant target markets and the brand owner can evidence this clearly if required.
Secondly, there is little point in filing a registration for a mark that you don’t intend to use.
McDonald’s is already feeling the backlash from this decision, with Burger King taking advantage of being able to freely use the ‘Big Mac’ name.
In a recent advertising campaign, Burger King used phrases such as, “The Like a Big Mac, But Actually Big” and “The Kind of Like a Big Mac, But Juicier and Tastier” in order to promote its own products.
An appeal is likely to come from McDonald’s. However, to overturn the recent EUIPO decision, further, more compelling evidence will need to be provided to support its genuine use of the trade mark. As things stand, it is not clear where this fresh evidence will be found.
For the moment, this means Supermac can rest assured that it has an exclusive right to use the ‘Supermac’ brand name to market its goods and services in the UK and the EU.
The only question is for how long.
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