EUIPO takes big bite out of Big Mac

The EUIPO has handed down its judgment in the dispute between Irish fast food chain Supermac's and McDonald's. The dispute began in 2017 with Supermac's arguing that McDonald's was using its name to prevent Supermac's expansion into the rest of Europe.

The judgment of the Cancellation Division cancels McDonald's registration of 'Big Mac' which was first registered in 1998. The reason given for the cancellation is a lack of genuine use of the mark for the five years ending 2017.

On first glance that seems ridiculous. We will all have seen advertisements and marketing material for 'Big Mac'. McDonald's adduced evidence of "significant sales" of the Big Mac in the relevant period. They also submitted advertising materials and brochures showing the use of the mark.

The judgment, however, went on to explain that the statements had been given by employees of McDonald's, and so should be treated with caution. It also said that McDonald's did not put in any information about how the marketing materials were circulated or tangible evidence that they led to any actual sales.

Supermac's has been effusive in its praise for the judgment, considering it a success for small businesses. It also explained that its objective had been to cast a light on the use of trademarks in bullying small business by multinational corporations. It has certainly done that.

IP specialists seem to be in agreement that while McDonald's may have made genuine use of the mark, it did not put in the right quality of evidence to prove that, and they have found out to their cost that not playing by the EUIPO's rules can be costly. McDonald's still has a right of appeal, and we are interested to see if it exercises it.

If you have any questions on the above, please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or legal@mcdanielslaw.com.