McDonald's loses legal battle with Irish chain Supermac's over 'Big Mac' trademark

by XPRESS, 17 January 2019

The European Union Intellectual Property Office ruled on Tuesday that McDonald's did not have the exclusive right to "Big Mac" trademark in Europe, after McDonald's tried to use it to stop the Irish chain from expanding into Europe.

Supermac's has 116 stores, all in Ireland and Northern Ireland. It was founded in 1978, one year after McDonald's opened its first Irish branch, though it doesn't sell a "Big Mac." By total number of restaurants, it is 0.3% the size of McDonald's.

McDonald's first took issue with the brand in 2017 after Supermac's tried to get permission to open stores in Great Britain and Europe, according to legal documents reviewed by Business Insider.

McDonald's argued that Supermac's expansion would be taking "unfair advantage of the distinctive character and repute" of the McDonald's brand and the "Big Mac" trademark.

McDonald's has owned a trademark for Big Mac in the EU since 1996, EUIPO documents reviewed by Business Insider show. But in an April 2017 counter-complaint, Supermac's challenged the trademark, citing EU rules that say a trademark can be revoked if it "has not been put to genuine use."

On Tuesday, the EUIPO sided with Supermac's. Officials said McDonald's had not "proven genuine use of the contested" trademarks "for any of the goods and services for which it is registered." Therefore, they said, "the application for revocation is wholly successful," and the Big Mac trademark "must be revoked in its entirety."

It means that Supermac's could start to open stores elsewhere in Europe and that other companies — as well as McDonald's — could use the Big Mac name in the EU.

The ruling is effective immediately, though McDonald's could challenge it, the EUIPO said.

On the EUIPO's trademark database, the status of the Big Mac trademark was updated to say "cancellation pending."

Supermac's founder, Pat McDonagh, told the Irish Examiner: "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 told the Irish Independent: "It's been a long road, nearly four years, but it was worth it to help protect businesses that are trying to compete against faceless multinationals."

He added: "It doesn't matter how big or how small you are, it's great that you can get a hearing from the European office. I'm delighted with the result; I was hopeful for a positive outcome — but not to the extent to which we won."

McDonald's did not immediately respond to Business Insider's request for comment.

Article Credit: Business Insider