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Background
Following a court challenge brought up by an Irish restaurant operator, the European Union Intellectual Property Office (EUIPO) has removed McDonald’s from the right to use its trade mark on “Big Mac” burgers offered in Europe.
The landmark ruling was delivered on Tuesday and has immediate effect, and was made by the EUIPO. This verdict is only the latest incident in a long-running legal conflict between the United States food giant and the family-owned chain Supermac’s. The EUIPO held that McDonald’s had not demonstrated actual usage of its Big Mac trade mark throughout the course of the five years prior to the filing of the complaint in 2017.
The drama started in 2015 when attorneys for the American company lodged a complaint against the Irish restaurant group’s application to register its name as a trade mark across the European Union. Initially, Supermac’s had the intention of expanding their business to the United Kingdom and the rest of the European Union.
Specifically, McDonald’s asserted that the trade mark of Supermac’s was too similar to its own, which would lead to confusion among customers. In April of 2017, Supermac’s, which operates more than one hundred locations across Ireland, made a proposal to the European Union Intellectual Property Office (EUIPO) requesting the revocation of “Mc” and “Big Mac” trade marks belonging to the American fast food giant, McDonald’s.
EUIPO’s Decision
The EUIPO concluded that there is not enough evidence of any commercial transactions, either online or through McDonald’s stores, and explained that the documents do not provide conclusive information that the products that are marked with the EUTM (European Union Trademark) are offered for actual sale. This conclusion was reached after taking into consideration the evidence that was presented in its entirety.
Additionally, the EUIPO further explained that even in the event that the products were made available for purchase, there is no information on the length of time that they were made available for purchase on the specific webpage or in any other manner. Moreover, there is no evidence that any actual sales were made or that any prospective customers were engaged in any way, whether it be through an offer or through a sale.
In spite of this, the European Union Intellectual Property Office (EUIPO) affirmed McDonald’s right to own the “Mc” trademark for chicken nuggets and some if its sandwich products including meat, fish, pork and chicken sandwiches.
Impact on Small Businesses and Future EUIPO Decisions
This decision of the EUIPO brings comfort to smaller companies in general and reassures them that an extremely successful and wealthy company will not simply receive favour from a decision of the EUIPO simply because they are a huge company. This decision is also an illustration of how crucial it is for the EUIPO to assist in protecting small businesses who are attempting to trying to compete against ruthless global corporations.
This is a victory for small businesses in general and prevents larger corporations from engaging in “trademark bullying” by preventing them from hoarding trademarks without actually using them. This now opens the realms of possibilities and encourages small businesses to challenge larger companies.
If you have any queries related to the above or an alternative matter, contact our expert team of solicitors through:
tmr@trademarkroom.com OR alternatively give us a call on 02380 000190.
