Supermac’s has won its long running case against the fast food giant, McDonald’s, to have the use of the iconic Big Mac trademark cancelled.
In a landmark judgement by European Union Intellectual Property Office (EUIPO), where trademark disputes are adjudicated, the office said that the multinational had not proven genuine use of the contested trademark as a burger or as a restaurant name. This represents a significant victory for Supermac’s against the multi-national as it is a Europe wide judgement. The judgement by EUIPO states that there was no evidence provided by McDonalds that refers to genuine use. In its judgement EUIPO states the following:
“It follows from the above that the EUTM proprietor has not proven genuine use of the contested EUTM for any of the goods and services for which it is registered. As a result, the application for revocation is wholly successful and the contested EUTM must be revoked in its entirety. According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 11/04/2017”
The Irish firm had formally submitted a request to EUIPO to cancel the use of the Big Mac and Mc trademarks that McDonald’s has registered in certain classes. It was also decided that McDonald’s bear the costs for the revocation.
Supermac’s asked the EU regulator that this take effect immediately on the basis that McDonald’s is engaged in “trademark bullying; registering brand names which are simply stored away in a war chest to use against future competitors.” McDonalds had previously succeeded in putting a stop to Supermac’s plans to expand into the UK and Europe on the basis of the similarity between the name Supermac’s and the Big Mac. This EUIPO judgement means that the main argument put forward by the US company is now gone.
Supermac’s MD, Pat McDonagh, said that the judgement represents a victory for small businesses all over the world. “We knew when we took on this battle that it was a David versus Goliath scenario but just because McDonalds has deep pockets and we are relatively small in context doesn’t mean we weren’t going to fight our corner. 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,” Mr McDonagh said. “They trademarked the SnackBox, which is one of Supermac’s most popular products, even though the product is not actually offered by them.”
Mr McDonagh said McDonald’s then entered into a saucy deal with Luxembourg in which, according to figures from the European Commission, they avoided paying €3.7Billion in tax – some of the proceeds of which, Mr McDonagh states, they went on to use in bullying campaigns against Supermac’s and anyone else who might compete against them in Ireland. He said that as part of that campaign they spent 11.5 times the entire spend of the sector on advertising in Ireland over a 5 year period (Neilson Ad Dynamics 2012-2016). “This was still not enough to thwart the loyalty of customers to Supermac’s and indeed of Supermac’s to its customers,” Mr. McDonagh said.
“This is the end of the McBully. This decision by the European Trademark Office is also an indication of how important the European institutions are to help protect businesses that are trying to compete against faceless multinationals,” he said. We can be proud to be part of a Europe in which all are equal. Small is no longer a disadvantage. We wholeheartedly welcome this judgement as a vindication of small businesses everywhere that stand up to powerful global entities.”