The Big Mac of legal battles
What we can learn from the Supermac’s v McDonald’s bout
Drew Barrow, Vincents Solicitors’ copyright and trade marks solicitor explains the recent European Court of Justice decision on the big burger row.
In a landmark legal battle, small Irish takeaway chain Supermac’s has successfully challenged McDonald’s use of the Big Mac trade mark in the European Court of Justice (ECJ) and won!
The culmination of a nine-year wrangle has seen the ECJ rule a trade mark can only be protected when it is used in a specific way, not as a blanket description.
It also sends a warning to anyone with a trade mark to ensure they can evidence its use in relation to all aspects of coverage.
From now on, in Europe, McDonald’s can only protect the Big Mac name when it comes to meat burgers. But they can no longer stop other companies from using similar names for their own company or chicken burger product.
This all started in 2015 when McDonald’s opposed an application by Supermac’s to register its name in the EU, on the basis it would cause confusion due to the similarity in Supermac’s name and that of the Big Mac burger.
The fast food giant won the first round on points, when Supermac’s was allowed to register its name as a company but not apply the Supermac’s brand to many of its products.
Supermac’s hit back in 2017 with a suit to end McDonald’s exclusive use of the trade mark Big Mac in Europe saying, among other things, the firm did not use the name for its restaurant, only for a product, arguing it was unfair for the American firm to prevent other companies from using something similar in their name.
Supermac’s has now successfully argued that the Big Mac trade mark has not been put to genuine use within the EU within a continuous five-year period, under all the classes McDonalds has listed under its protection, specifically in relation to the name being used as a restaurant name and for chicken sandwich and poultry products.
The ECJ’s decision to delist the Big Mac trade mark in relation to a restaurant name and poultry products opens the door for Supermac’s to apply to register its name in the EU, as it first tried in 2015, and expand into Europe.
McDonald’s retains the use of the Big Mac trade mark in relation to its meat products, and the famous beef burger for which the trade mark is globally recognised.
This decision demonstrates the importance of ensuring you protect only the classes which are relevant and necessary for your business when you are making an application to register a trade mark. It also shows how important it is to have evidence of trade mark use once granted, to avoid it being successfully challenged further down the line.
The outcome is also a shot across the bows of multi-national businesses which use their monopoly of trade marks to hamper competitors as the ECJ has shown it has the appetite to back the little guy when it comes to the big fight.
For support with trade mark issues contact Michael Sandys or Drew Barrow at Vincents Solicitors on 01772 555176.
Supermac’s (Holdings) Ltd. v. the European Union Intellectual Property Office and McDonald’s International Property Co. Ltd., case number T‑58/23, in the European General Court.