Supermac’s bites back at McDonald’s over trade mark dispute

A recent decision of the European Union Intellectual Property Office (“EUIPO”) has seen McDonald’s lose its right to the infamous Big Mac trade mark.

The dispute between Supermac’s and McDonald’s began back in 2015, after lawyers for McDonald’s filed an objection against the Irish restaurant chain following its attempt to register its name as an EU trade mark. Supermac’s sought to appeal McDonald’s claim in 2017 and for the EUIPO to cancel McDonald’s rights to the Big Mac trade mark on the basis that McDonalds had not proven genuine use of it. The onus was then on McDonalds to defend the claim and evidence their use of the trade mark.

Why is it important to protect your brand name

The importance of obtaining protection for your brand name by registering it as a trade mark is crucial to prevent key competitors from using it. More importantly, once it has been registered you must use it in such a manner to prevent it from being cancelled by a third party for improper use. In McDonald’s case, the EUIPO found that McDonald’s had failed to meet these standards by providing limited evidence, including affidavits from executives and printouts from Wikipedia pages. On this basis, their right to the Big Mac trade mark was cancelled. This decision will come as a surprise to many, considering how well known the Big Mac burger is and highlights how important trademarking your brand is. Not only that, but you must also ensure that you actually use it!

The Big Mac trade mark was registered in three different classes, of which McDonalds was required to prove use of all three. By failing to sufficiently evidence such use, the whole trade mark was in fact cancelled. This landmark case highlights not only the importance of registering your trade marks, but making sure that you register them under the most appropriate classes.

If you would like any legal advice on registering a trade mark, or assistance with determining which classes would be more suitable for your particular trade mark, then please contact a member of our experienced Commercial Services Department who will be happy to assist.