McDonald’s loses ‘Big Mac’ TM Battle against Supermac’s

Background

Supermac is a fast food chain based in Ireland, founded  by Pat Mc Donagh in 1978. It is Ireland’s largest indigenous quick service restaurant group. The company has been growing and operating more than 100 outlets across Ireland and Northern Ireland.

Mc Donald’s, on the other hand, is an American multinational fast food chain founded in 1940. It is the world’s largest fast food chain having its outlets in more than 100 countries.

Supermac’s Vs Mac Donald

In 2015, Supermac applied to register its name as a trademark for restaurant services in Europe. The company aimed to expand in the United Kingdom and Europe, selling beef and chicken burgers as well as fried chicken nuggets and sandwiches. McDonald’s opposed the Super Mac application for the name and logo. McDonald argued that the name “Supermac” is too similar to “Big Mac” and would cause confusion among consumers. Supermac was allowed to use trademarks but not for many food and drink items.

The following year, Supermac took an aggressive view and applied to the European Intellectual Property Office (EUIPO) to end the exclusive use of the term “Big Mac” by McDonald. Supermac argued that McDonald’s was engaged in trademark bullying and simply registering brand names to avoid future competition. It accused McDonald’s of not genuinely using its trademark for a continuous period of five years in relation to goods and services for which it was registered.

 Under European Union Trademark law,  a trademark can be revoked if it has not been put to “Genuine Use” for a continuous period of five years. Mcdonald’s provided evidence of Big Mac’s use and submitted affidavits from company executives, brochures, packaging, and print-outs of advertising posters and websites. It argued that the Big Mac is a well-known product and is sold across Europe.

The European Intellectual Property Rights Office (EUIPO) gave a decision in favour of  Super Mac. It revoked McDonald’s “Big Mac” by stating that the company failed to prove the genuine use of the trademark. EUIPO found that the evidence submitted by McDonald’s is insufficient to establish genuine use of the mark. It contended that there was a lack of data attesting to the extent of McDonald’s genuine commercial use of the mark.

Appeal  by McDonald’s

McDonald’s took decisive action by appealing the decision in March 2019 and submitted compelling additional evidence. This evidence included consumer surveys highlighting the widespread recognition of the term “Big Mac,” as well as receipts, cash register data, and a financial audit report demonstrating the significant sales of Big Mac units. In addition, they provided Google analytics data, photos of McDonald’s menus, advertising materials, and photographs of the Big Mac product, along with evidence of their extensive marketing efforts, social media presence, articles, and promotional YouTube videos.

Following a thorough analysis of the new evidence, the European Union Intellectual Property Office (EUIPO) made a significant decision by partially upholding McDonald’s appeal. The protection of the BIG MAC trademark was confirmed, specifically for meat sandwiches, chicken sandwiches, restaurant services, and other food and drink establishments, drive-through facilities, and the preparation of carry-out foods.

Parallel With Indian Legislation

The trademark battle between McDonald’s and Supermac in Europe provides valuable insights into the application of trademark laws and is paralleled with Indian trademark legislation. Indian Trademark Law, governed by the Trade Marks Act of 1999, contains provisions similar to those in European Trademark law. There are the following similarities :

  1. Genuine use of Trademark: Both European and India Trademark law emphasises the necessity of genuine use of Trademark. According to Section 47 of the Indian Trade Marks Act 1999, which postulates that a registered trademark may be taken off the register in case there is no bona fide use of the trademark for the continuous period of five years from the date of registration. The legislative intent behind section 47 is to prevent hoarding of trademarks.
  2. Trademark Bullying: The practice of trademark bullying, where larger companies use their resources to suppress smaller competitors by registering trademarks without genuine intent to use them, is recognized in India. This ensures that trademarks are used to protect genuine business products rather than to obstruct competition.
  3. Burden of Proof : In both jurisdictions the burden of proof lies with the trademark proprietor to demonstrate the genuine use of the trademark when challenged. McDonald’s asserts that the “Big Mac” is its trademark and has provided  evidence to support this claim. This is same in India, The trademark owner must submit substantial proof of use, including sales figures, advertising expenditures, affidavits, and other documentation to demonstrate continuous and bona fide use of the trademark.
  4. Revocation of Trademark: The grounds of cancellation of trademark in both Indian Trademark law and European Trademark law are similar. Section 47, 50 and 57 lays down the grounds of cancellation. They are:
  • Trademarks registered with the goods and services are done without any bonafide or genuine intention to use it.
  • A Trademark registered is used in such a way which causes deception or confusion to the public.
  • Trademark was not bonafide used for five years from the date of registration.

Conclusion

The Trademark dispute between Supermac and McDonald’s over the “Big Mac” trademark illustrates a classic legal battle between a small company and a large corporation. This case highlights the importance of proving the actual use of a trademark. The European Union Intellectual Property Office’s initial decision to cancel the “Big Mac” trademark due to lack of evidence of actual use shows how strict the requirements are for maintaining trademark protection.

McDonald’s subsequent appeal and the additional evidence they provided demonstrate how challenging it can be to prove genuine use. This case not only impacts European trademark law but also provides valuable insights into Indian trademark law, which has similar provisions about genuine use, trademark bullying, and burden of Proof.

References

  1. The Trademark Act (Act No. 47 Of 1999)
  2. https://trademarklawyermagazine.com/mcdonalds-loses-big-mac-for-subsequent-goods-and-services/
  3. https://guidelines.euipo.europa.eu/1803468/1789224/trade-mark-guidelines/1-1-the-grounds-for-cancellation
  4. https://www.lexology.com/library/detail.aspx?g=68f5df1c-00cb-49d1-b548-dc6895988f35
  5. https://www.mondaq.com/india/trademark/1187590/the-european-union-has-stripped-mcdonalds-of-its-trademark-on-big-mac-burgers
  6. https://finshots.in/archive/mcdonalds-loses-the-big-mac-trademark-eu/
  7. https://www.theguardian.com/business/2019/jan/15/mcdonalds-loses-big-mac-trademark-legal-battle-supermacs

Author: Divyanshi Gautam, Student of School of Law, ITM University, Gwalior