Who: McDonald’s International Property Company Ltd (McDonald’s); Supermac’s (Holdings) Ltd (Supermac’s); Burger King.
When: 1 February 2019
Law stated as at: 14 March 2019
Burger King has rubbed a healthy portion of salt into McDonald’s loss of the “BIG MAC” trade mark after the latter’s Irish court battle with a local restaurant chain.
On 15 January 2019, the European Intellectual Property Office (EUIPIO) cancelled the BIG MAC trade mark, thwarting McDonalds’ attempt to use its trade mark against a local Irish burger chain using similar names to its famous burger.
Irish restaurant chain Supermac’s – which shares the nickname of managing director Pat McDonagh that was acquired after an impressive performance in a Gaelic football match as a teenager in the late 1960s – faced opposition from McDonald’s for similarities between the name of some of its burgers, including “Mighty Mac“, and the iconic McDonald’s Big Mac burger.
However, the EUIPO decided that McDonald’s hadn’t proven genuine use of the BIG MAC trade mark in the EU, and accordingly revoked the trade mark. The trade mark was registered for classes of goods and services related to various food types, such as sandwiches. However, while the fast food giant could provide evidence of posters, packaging and affidavits to attest to Big Mac sales in Europe, it could not prove use for many of the goods and services that the registration related to beyond sandwiches. The EUIPO therefore revoked the trade mark in its entirety, including in relation to sandwiches.
Supermac’s hailed the ruling as David and Goliath victory, and a rallying call against “trade mark bullying“, where a big brand aggressively enforces its trade marks against smaller businesses. McDonald’s does, though, have the option to appeal the decision, so the beef between the two chains may continue.
In the meantime, Burger King’s Swedish business quickly pounced on the opportunities opened up by the ruling. It revamped its menu to describe its own burgers by reference to its fast-food rival’s burger:
“Like a Big Mac, but actually big”
“The burger Big Mac wished it was”
“The kind of like a Big Mac, but juicier and tastier”
“Anything but a Big Mac”
“The Big Mac-ish but flame-grilled of course”
Why this matters:
The EUIPO’s decision is a warning to trade mark owners to “use it or lose it”. While McDonald’s may appeal the ruling, this decision shows the reluctance of trade mark offices to recognise registrations which it deems not to be fully used, and the rigorous evidence that will be needed to prove that use. In McDonald’s case, the exposure left by the absence of the trade mark has allowed a main competitor to step in and use the previously trade-marked term to promote its own products.