McDonald’s loses trademark battle with EU over Big Mac and Supermac’s

Supermac’s, the small Irish takeaway company, has won the David v Goliath legal battle against McDonald’s regarding the use of its trademark for the Big Mac. This will allow it to open stores across Europe.

This ruling means that the US-based fast food multinational will no longer be able to use the term “Big Mac” to describe chicken burgers in the EU.

The European Court of Justice (ECJ), in its decision, ended a nine-year legal battle between the Irish operator and its global competitor. Supermac spokesperson stated that the chain had a similar lawsuit pending in Britain, which, if it was successful, would lead to expansion into the British Market.

In 2015, Supermac’s attempted to register its trademark in the EU for restaurants with a view of expanding into other parts of Europe. McDonald’s opposed the application made by Supermac’s in order to use the name and logo.

McDonald’s claimed that the name Supermac’s would confuse customers and cause confusion. In 2016, Supermac’s won a partial victory when it was granted trademark rights for the restaurant name, but not many other food items and drinks.

The Irish chain, founded in Ballinasloe in County Galway in 1978, filed a request with the EU Intellectual Property Office to stop McDonald’s exclusive use of “Big Mac” in the EU.

The company argued that McDonald’s had registered brand names to use against competitors in the future, but that they were not being used in a genuine manner in the EU.

The EUIPO partially upheld Supermac’s case in 2019. On Wednesday, the ECJ ruled in its favor with a decision that Big Mac would no longer be listed as a trademarked name for a restaurant and the chain could not use it to market poultry products.

Pat McDonagh, founder of Supermac, said, “We objected because Big Mac is not a real restaurant.” The European Court delisted the trademark because it wasn’t used for a business.

The ECJ stated: “The evidence that was submitted by McDonald’s did not provide any indication as to the extent of usage of the mark with respect to those goods, particularly in terms of volume, length of time during which it was used, and frequency of use.”

McDonagh stated: “This ruling is significant and takes a commonsense view of the use by multinationals of trademarks. This is a major victory for small business owners around the world.

The original purpose of our cancellation application was to shed light on this multinational’s use of trademark bullying to suppress competition. Since years, we have said that they are using trademark bullying.”

The ECJ stated: “McDonald’s did not prove that the contested trademark was used in a genuine manner as regards to the goods ‘chicken sandwich’, ‘foods made from poultry products’, and’services associated with operating restaurants or other establishments or facility engaged in providing food or drink for consumption or for drive-throughs; preparation of take-out foods’.

Matthew Harris, intellectual property lawyer at UK law firm Pinsent Masons, described the ruling as a “huge wakeup call” to owners of well known trademarks. They must now, just like their smaller competitors, prove use of trademarks. Otherwise, they risk losing these trademarks.

McDonald’s issued a statement saying: “The EU general court’s decision does not affect our rights to use the ‘BIG MAC’ mark.” This decision will have no impact on our ability to use the BIG MAC mark or protect it against infringements.

McDonald’s holds the EU BIG MAC registration since 1996. It remains in full force for the iconic sandwich our fans have come to love and know. We’re proud to serve our Big Mac, and local communities, in partnership with our franchisees.

McDonald’s spokesperson said that the decision of the EU General Court does not affect the right to use the trademark ‘Big Mac’. Customers all over Europe love our iconic Big Mac, and we’re proud to continue serving local communities as we have for decades.