Background and Holding
In a landmark decision, the European Union Intellectual Property Office (EUIPO) has revoked McDonald’s trademark for “Big Mac” on chicken sandwiches and poultry dishes within the EU. This holding concludes a long-running legal battle McDonalds had with Irish fast-food chain Supermac’s and has significant implications for both companies, as well as the broader European trademark market.
The long-running legal dispute began in 2015 when Supermac’s, a smaller Irish fast food chain known for its burgers and fish and chips, sought to register its company name as a trademark across the EU. McDonald’s objected, arguing that the similar-sounding “Supermac’s” could create confusion amongst consumers, resulting in trademark dilution of its famous “Big Mac” trademark that would damage its brand recognition.
However, Supermac’s launched a strategic counter-offensive. Supermac’s argued that McDonald’s use of the “Big Mac” trademark should be limited solely to its beef burgers, and should not encompass chicken sandwiches and other poultry products because the trademark had not been put to continuous and genuine use in the EU for chicken sandwiches in the five years preceding the case, and accused McDonald’s of engaging in trademark intimidation by leveraging its market dominance against competitors. This placed the onus on McDonald’s to prove that it actively used “Big Mac” for chicken sandwiches within the EU.
After careful consideration, EUIPO sided with Supermac’s and revoked McDonald’s trademark for “Big Mac” on chicken sandwiches. The court’s decision hinged on the fact that McDonald’s failed to demonstrate sufficient use of the “Big Mac” name for chicken products.
Beyond the Burger: Repercussions of the Ruling
The impact of this landmark decision will extend to the broader European fast-food market. First, companies using trademarks broadly across various products may need to re-evaluate their usage patterns. The EUIPO decision emphasizes the importance of actively using trademarks for all intended products to ensure legal protection. Even for business owners in different industries or markets, active use and enforcement of trademarks in their portfolios is of utmost importance to demonstrating the commercial presence and significance of the marks.
On the other hand, this ruling might empower smaller, regional chains to challenge the dominance of multinational corporations in the European trademark arena. It sets a precedent for regional specialties and niche brands to carve out a space for themselves in a competitive market by contesting overly broad trademarks used by powerful corporations. This could lead to a more diverse fast food scene in Europe, because the holding could encourage the development of regional specialties alongside established global brands. Third, McDonalds now faces a strategic dilemma. It can either appeal the EUIPO decision, a potentially lengthy and expensive process, or rebrand their chicken sandwiches in the EU market.
Ultimately, the EUIPO decision deals a blow to McDonald’s, but it’s not necessarily the end of the story. The fast-food giant has the right to appeal the ruling. However, this case serves as a stark reminder that established long-established trademarks can be challenged, especially if not actively and uniformly used across all relevant product categories.