Small Irish business wins ’David and Goliath’ trade mark case against McDonalds
An Irish fast-food company has claimed a famous victory over one of the biggest brands in the world. Supermac, a beloved restaurant chain throughout Ireland and Northern Ireland, has successfully challenged McDonalds over its trade mark for ‘Big Mac’ in the European Union.
The case arose after Supermac attempted to expand into the EU, but was prevented by McDonalds owing to the alleged similarities between the terms ‘Supermac’ and ‘Big Mac’. Supermac responded by applying to have McDonald’s ‘Big Mac’ EU trade mark registration revoked on the grounds of non-use. Although McDonald’s filed evidence of use, the European Intellectual Property Office (EUIPO) ruled that the evidence was insufficient.
McDonald’s has a reputation for vigorously enforcing its trade marks around the world. In fact, in 2016, a European court ruled against a Singaporean company launching ‘MacCoffee’ in the EU, agreeing that the brand would unfairly benefit from the burger giant’s reputation.
Now the tables are turned.
Supermac’s managing director, Pat McDonagh, described the case as a “David versus Goliath scenario”, referring to the huge disparity in the size of the companies. The Irish chain accused McDonalds of using “trademark bullying” to inhibit the growth of smaller brands, hailing the ruling as “the end of the McBully”.
While we are almost certain McDonald’s will appeal (because they have lost on a technicality), it is an interesting case which will undoubtedly encourage other Davids to follow suit.
Victor Caddy at Wynne Jones IP says “It goes to show that it is always worth challenging a registered trade mark that is old enough to be vulnerable to cancellation on the grounds of non-use because you never know if the trade mark owner has access to, or the inclination to find, the evidence it needs to prove genuine use”.
“In 2016, the UKIPO revoked the UK registration of Gucci’s famous interlocking G’s logo, again on the grounds of non-use, and the inadequacy of the evidence Gucci filed in defense of its registration”.
“For trade mark owners (Davids as well as Goliaths), these decisions highlight the importance of archiving evidence to demonstrate genuine use of a trade mark, and, what-is-more, archiving evidence that is as specific and detailed as possible. You never know when you may need it. And the consequences of not being able to prove genuine use can be catastrophic.
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