Supermac’s took McDonald’s to the EUIPO and successfully stripped the fast food giant of its Big Mac trademark in a case that will affect franchises in the UK and beyond
“This is the end of the McBully,” said Patrick McDonagh, founder of Supermac’s, after the franchise won a huge trademark battle against McDonald’s in January 2019. The Irish fast food chain had successfully convinced the European Union Intellectual Property Office (EUIPO) to strip the home of the Golden Arches of its Big Mac trademark.
The fight had begun years earlier after Supermac’s European expansion efforts had been halted due to McDonald’s claiming the Irish chain’s name was too similar to its Big Mac trademark. The 116-franchisee strong network from the Emerald Isle didn’t let this slide. It took action against the Yankee rival in 2017 by submitting a request to the EUIPO, imploring it to cancel the Big Mac and Mc trademarks. The company, launched in 1978 in Ballinasloe near Galway, accused McDonald’s of engaging “in trademark bullying by registering brand names which [have] nothing to do with them, they do not use and which are simply stored away in order to pulverise some future [competitor.]”
To drive its point home, Supermac’s submitted a list of McDonald’s trademarks, which included McKids, McCountry, McInternet, McImagination and Snack Box. The last one was suspiciously close to the name of Supermac’s long-standing chicken and fries offering called Snackbox. In fact, McDonagh stated that registering this particular trademark was “a step too far” by McDonald’s.
Despite McDonald’s providing the EUIPO with posters, packaging and affidavits demonstrating how the trademark was in use, the EU body went along with Supermac’s argument and cancelled the Big Mac trademark. “To most people, Supermac’s claim that McDonald’s had not put Big Mac to genuine use in the EU and that their registration should therefore be cancelled might seem ridiculous,” says Nathalie John, associate at intellectual property law firm Gill Jennings and Every. “Walk into almost any McDonald’s on the continent and you’re sure to find those burgers on offer. However, McDonald’s failed to show this, seemingly for one major reason: the evidence they filed did not objectively show that Big Macs were actually offered for sale or on what sort of volume.”
After the EUIPO’s decision, McDonald’s issued a statement saying: “We are disappointed in the EUIPO’s decision and believe this decision did not take into account the substantial evidence submitted by McDonald’s proving use of our Big Mac mark throughout Europe.” The chain has since appealed the ruling to cancel the trademark.
In response to the appeal, McDonagh accused McDonald’s of using delaying tactics to keep Supermac’s from entering the European market. But in a characteristically bullish manner, he added: “We are at this for four years so one more year doesn’t bother us. I am very confident that we will get the decision on the Supermac’s trademark.”
However, given the strength of McDonald’s Big Mac brand, it’s in no way clear that Supermac’s will win. “During the appeal McDonald’s may be able to rectify the shortfalls in their evidence, providing them with an opportunity to reinstate their Big Mac EU trademark,” suggests Richard Parsons, associate for IP litigation and dispute resolution at Maucher Jenkins, the intellectual property law firm.
Both Supermac’s and McDonald’s were repeatedly asked by Elite Franchise to comment on what the ongoing battle might mean for the companies. Neither responded to our requests. Still, the experts we spoke to agree that the EUIPO’s January decision will have both short and long-lasting consequences. “In the short term, this is an embarrassment to McDonald’s and highlights the importance of seeking legal advice from competent IP lawyers should your business face similar trademark disputes,” argues Parsons.
Indeed, the fast food giant’s arch nemesis Burger King has already jumped on the opportunity to taunt McDonald’s loss. In a Swedish ad, a new menu trolled its competitor by advertising items like Big Mac-ish But Flame-Grilled of Course, Burger Big Mac Wished It Was and Like a Big Mac, But Actually Big. Commenting on this latest in a long list of cheeky taunts against the contender, Iwo Zakowski, Burger King’s general manager of Sweden and Denmark, quipped: “McDonald’s just lost its trademark for the Big Mac for suing a much smaller player [and it’s] too much fun for us to stay away.”
This was hardly the first time McDonald’s faced legal disputes with businesses with similar trade names. In 1993, McDonald’s won a court order blocking a dentist in New York from selling services under the name McDental. Three years later, a Scottish woman named Mary Blair found herself in McDonald’s crosshairs because her sandwich shop was named McMunchies. More recently, McDonald’s blocked a Singaporean company from registering the name MacCoffee as an EU trademark in 2016. And those are just some of the many intellectual property battles the company has fought over the years.
But even though it’s hardly the first time McDonald’s has been embroiled in trademark battles and this one is yet to see its conclusion, it can still have huge ramifications for UK franchises. “Whilst the trademark decision is part of a much wider battle between McDonald’s and the Irish brand Supermac’s, this particular victory for Supermac’s highlights that it’s the registered owner’s duty, when faced with defending an action for non-use of a trademark, to be able to prove that they have been genuinely using the mark,” explains Jacqueline Watts, senior associate solicitor at A City Law Firm.
And that might be something more firms should prepare for. “As a clear David vs Goliath decision it will help give other smaller brands confidence to challenge registered brand owners that claim monopoly rights that may not in fact be valid,” says Fiona Boswell, partner and head of franchising at law firm Fraser Brown Solicitors. “I anticipate it [will open] the floodgates to other challengers and pushback on cease and desist claims.”
And when that happens, franchises of all sizes must make sure their trademarks are strong and up to date. “The value attributed to a franchise derives from the strength of the brand and its associated trademarks,” argues Parsons. “Therefore, [franchisors] need to ensure that their trademarks are kept up to date and are used.” To do this, Parsons advises franchisors to keep records on how they use the brand to better prove the usage if the trademark is challenged. “This should include third-party evidence and information to support claimed sales and turnover figures, as materials produced internally by brand owners may have low probative value in non-use proceedings,” he continues.
Of course, it’s not just about protecting the trademarks but also about taking steps for when you might lose them. "This case is a wake-up call to franchisors,” says Jo Pritchard, legal director at law firm TLT. “It’s really important to invest in your [trademarks] but it’s critical that your franchise agreement deals with all contingencies.” For instance, she argues a franchisor should retain the rights to alter the brand and to make the change at the franchisee's own expense. “If the rights were lost and the franchisee is forced to make a change then there’s potential for a damages claim against the franchisor but a simple right of brand substitution will manage this risk," Pritchard explains.
While the last haymaker has hardly been hurled between Supermac’s and McDonald’s, the legal battle should highlight the importance of franchises taking trademarks seriously.