Irish chain restaurant, Supermac’s, recently enjoyed resounding success before the UK Intellectual Property Office (UKIPO) Tribunal Section, where globally renowned McDonald’s sought to oppose Supermac’s UK trade mark applications, one for the word ‘SUPERMAC’S’ and the other as a figurative representation of Supermac’s logo, both applied for in class 43 for services relating to providing food and drinks, takeaway services, and restaurant services.
McDonald’s relied on its various and numerous UK registered trade marks including ‘BIG MAC’ (word), ‘McDONALD’S’ (word), ‘McCAFE’ (word), which all notably contain the elements ‘MAC’ and ‘MC’. McDonald’s alleged that Supermac’s applications were for similar trade marks covering identical or similar services to its own, that Supermac’s sought to free ride, tarnish and/or dilute the McDonald’s marks, and that Supermac’s sought to pass itself off as McDonald’s. However, McDonald’s was unsuccessful in establishing a likelihood of confusion on the part of the relevant public between its marks and the Supermac’s marks, as where the McDonald’s marks used ‘Mc’ and ‘Mac’ as prefixes, Supermac’s marks used ‘Mac’ as a suffix. Where the relevant McDonald’s marks had ‘Mac’ as a suffix, the ‘Super’ element of the Supermac’s marks was sufficiently different so as to quash any likelihood of confusion.
Those differences also aided Supermac’s in overcoming the allegations of free riding off McDonald’s reputation in the marks, and to refute the suggestion of a link between the respective marks so as to tarnish the McDonald’s marks. Lastly, the UKIPO held that any inference of similarity between the marks would rest solely on the use of the element “MAC”, and that the McDonald’s marks incorporating this element were registered for different goods and services in comparison to the services covered by Supermac’s applications, therefore there would be no dilution of the McDonald’s marks.
Lastly, McDonald’s claim for passing off failed as it could not be established that the Supermac’s applications sought to misrepresent Supermac’s as being economically linked to McDonald’s. Accordingly, all of McDonald’s grounds of opposition failed, meaning that the Supermac’s applications will proceed to registration, subject to any appeal from McDonald’s. Given the scale of McDonald’s operations, it would not be out of the ordinary for a smaller business to concede defeat against much larger businesses, though this decision emphasises the importance and accessibility of smaller businesses protecting their own rights and commercial interests, particularly through UKIPO registry proceedings.
If you have any questions on the above, or if you need any advice or support in respect of your own Intellectual Property, please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or legal@mcdanielslaw.com.
