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McDonald’s stripped of Big Mac trademark across EU

Irish chain Supermac’s had launched legal challenge against EU trademark

Jon Stone
Brussels
Tuesday 15 January 2019 14:45 GMT
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McDonalds stripped of Big Mac trademark across EU

The European Union has stripped McDonald’s of its trademark on Big Mac burgers in Europe after a legal challenge by an Irish restaurant chain.

The landmark decision by the bloc’s trademark regulator, which has immediate effect, was made on Tuesday and is just the latest episode in a long-running legal dispute between the US food giant and family owned chain Supermac’s.

The saga began in 2015 after lawyers for the US chain filed an objection against the Irish restaurant group’s bid to register its name as an EU-wide trademark. Supermac’s had wanted to expand to the UK and rest of EU.

McDonald’s claimed the branding of Supermac’s was too similar to its own and would cause confusion among consumers. The Irish company is named after its founder Pat McDonagh, who is said to have earned the name “Supermac” while playing Gaelic football in his youth.

In April 2017 Supermac’s, which has over 100 restaurants across Ireland, submitted a request to the European Union Intellectual Property Office (EUIPO) asking the bloc to cancel the US fast food giant’s trademark on “Mc” and “Big Mac”.

Supermac’s accused McDonald’s of “trademark bullying” and registering brand names “which are simply stored away in a war chest to use against future competitors”.

Lawyers for McDonald’s had provided printouts of its websites, examples of advertisements and packaging, three signed affidavits from its executives, and a printout of its Wikipedia page as evidence that it sells Big Macs across the EU and deserves a trademark.

The EUIPO ruled that “the evidence is insufficient to establish genuine use of the trademark” on Big Macs by McDonald’s across the EU.

“Taking into account the submitted evidence as a whole, it is concluded that the documents do not provide conclusive information that the products marked with the EUTM [European Union Trademark] are offered for actual sale, as there is no confirmation of any commercial transactions, either online, or via brick-and-mortar operations,” the EU office ruled.

“Even if the goods were offered for sale, there is no data about how long the products were offered on the given webpage or in other ways, and there is no information of any actual sales taking place or any potential and relevant consumers being engaged, either through an offer, or through a sale.

“Finally, as far as the relevant services are considered, there is no single piece of evidence that refers to any of the registered services being offered under the EUTM.”

McDonald’s was also ordered by the regulator to pay costs of €1,080 (£965) for the decision. It has the right to appeal. In the EU, trademarks can be registered both at a national and EU-wide level.

Pat McDonagh, the managing director of Supermac’s, said: “The original objective of our application to cancel was to shine a light on the use of trademark bullying by this multinational to stifle competition. We have been saying for years that they have been using trademark bullying.

“We wholeheartedly welcome this judgment as a vindication of small businesses everywhere that stand up to powerful global entities.

“This decision by an independent European office is also an indication of how important the European institutions are to help protect businesses that are trying to compete against faceless multinationals.

“This now opens the door for the decision to be made by the European trademark office to allow us to use our SuperMac as a burger across Europe.”

McDonald’s has not yet commented on the decision at the time of publication.

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