Insight Trade marks

Big Mac ruling: Hard to swallow

The EU Intellectual Property Office has McDonald’s was therefore required to What next? recently issued a Decision which submit evidence that it had used the If the Decision becomes final – and cancels McDonald’s EU protection for trade mark BIG MAC in the EU in McDonald’s have indicated that they the trade mark BIG MAC. relation to food items and restaurant intend to appeal against it – it would services during the period 2012-2017. weaken McDonald’s Opposition against The background to this Decision is a the EU Trade Mark Application for dispute between McDonald’s and Insufficient evidence SUPERMAC’S. That could potentially Supermac’s, an Irish fast food McDonald’s submitted affidavits signed open the door to registration of that restaurant that has operated in Ireland by representatives in the UK, Germany trade mark in the European Union, since 1978 and has expanded to over and France, brochures and printouts of which might lead to the expansion of 100 stores across Ireland and Northern advertising posters referring to Big Mac Supermac’s restaurants into Europe. Ireland. hamburgers, printouts from various national www.mcdonalds websites However, although McDonald’s may Challenging the giant depicting Big Mac hamburgers, and a have lost this battle, they will no doubt In 2016, Supermac’s filed an EU Trade printout from the Wikipedia entry for double their efforts to win the war. Mark Application for SUPERMAC’S the ‘Big Mac’ hamburger. Even if their appeal were unsuccessful, covering restaurant services in Class 43. they are likely to be in a position to McDonald’s filed an Opposition against The EU Office found that this evidence apply to cancel Supermac’s resulting EU this Application on the grounds that it is was insufficient to establish genuine use Trade Mark on the basis of national confusingly similar to a number of its of BIG MAC in the European Union: they registered or unregistered rights in the trade marks including McDONALD’S, held that the evidence submitted was mark BIG MAC in one or more EU BIG MAC, McRIB, MCMUFFIN, not independent as it all originated Member States. McDouble, McBites, MCTOAST, from McDonald’s itself, and MCFISH, McWRAP, McCAFE, furthermore, did not show that any McFAMILY, McCOMPASS, McINTERNET, actual sales had been made or even McMISSION, and Mc. how the products could be purchased or ordered. Supermac’s requested that McDonald’s provide evidence of use of all of its It seems extraordinary that McDonald’s trade marks which had been registered did not provide sufficient evidence of its for more than five years. They also took use of BIG MAC in the European Union the more proactive step of applying to given that millions of Big Mac cancel McDonald’s EU Trade Mark for hamburgers must be sold in this BIG MAC on the basis that this trade territory every year, but demonstrates mark was likely to be particularly the importance of submitting wide- important to the result of the ranging evidence of actual use of your Matthew Smith opposition proceedings. trade mark. Partner, London [email protected]

January 2019 www.abelimray.com