Tod Davies, from our Dispute Resolution team, looks at McDonald’s recent trademark troubles.
Following on from its victory over McDonalds back in January (read here), Irish fast-food chain Supermac’s has triumphed again.
The European Union Intellectual Property Office (EUIPO) has ruled that McDonalds has lost its exclusive claim to the “Mc” trademark on some of its food products within the EU, after the court ruled that McDonalds had not proved genuine use of the prefix on some of its trademarked products.
This has been a long-running dispute between the two big companies – in the first instance over the similarity between the name Supermac, and the famous Big Mac. McDonalds, a heavyweight in enforcing its intellectual property, has so far effectively prevented the Irish food chain from expanding its business into the UK and Europe.
This led to Supermac, which owns more than 100 fast-food restaurants in Ireland, asking the EUIPO to rule on the Supermac vs Big Mac issue, winning a partial victory earlier this year. This latest ruling revokes McDonalds’ exclusive trademark rights to use the term “Mc” over all of its products, although it keeps exclusive right to “Mc” for many of its core products, including chicken nuggets and many of its sandwich products.
McDonalds argued that due to its long and continuous use of the term, it is widely associated with them by EU consumers and pointed to several past decisions in its favour. However, this was rebutted by the Irish chain which demonstrated that many pubs, hotels, restaurants, and food products contained the prefix as part of a surname, as it is a very common prefix for surnames through Britain and Ireland. Principally among them is the founder of Supermac’s, Pat McDonagh, who likes to refer to his global fast food rival as “McBully”. McDonagh also added that the latest ruling was a “victory for small businesses”, and “the Mc is back”.
Supermac’s also claimed in the proceedings that McDonalds never use the prefix “Mc” in a standalone sense, but only in combination with a product name, “it is not a ‘Mc’ chicken sandwich, it is a ‘McChicken Sandwich”, meaning the protection should be simply cover “McChicken Sandwich” and not the umbrella word “Mc”. The EUIPO agreed, finding that there was no evidence of use of the contested trademark “Mc” alone, but “only accompanied by further elements”.
McDonalds has pointed out that the protection remains for many of its core products and stated that the decision “does not impact McDonald’s ability to use its Mc-prefixed trademarks or other trademarks throughout Europe and the world, and McDonalds will continue to enforce its rights.” One thing is for sure, the battle between these two fast food chains is unlikely to end anytime soon.