Case Name: Supermac’s (Holdings) Ltd vs McDonald’s International Property Co. Ltd

Citation: ECLI:EU:T: 2024:360 

Court: General Court of the EU.

Corum/Judges: M.J. Costeira (Rapporteur), President, M. Kancheva and U. Öberg, Judges.

Introduction

Generally trademark is a word, phrase, design, symbol or the combination of all the above, which distinguishes the products, goods, and services of one company from another company. Generic Marks, Descriptive Mark, Suggestive Marks, Fanciful Mark and Arbitrary Mark are the five main categories of trademarks. Registering a trademark means that your competitor cannot encroach upon your product, goods and services in the market. In the EU, before registering a trademark must confirm whether someone has not registered the same trademark earlier. After that submit the application, once application is submitted, the European Union Intellectual Property Office (EUIPO) will examine the application and publish it for any opposition, for which there is a waiting time, and once the waiting time is over and confirms that there is no opposition, then EUIPO will publish the registration.

Facts

McDonald’s is a global fast-food chain, and Supermac’s is an Irish-based fast-food chain founded in 1978, running over 100 outlets in Ireland, having a similar menu to McDonald’s. In 1996, McDonald’s officially registered the “Big Mac” trademark with the EUIPO, covering a range of products and services. Fast forward to 2015, and Supermac’s showed interest in branching out into the EU markets. Following that, Supermac’s submitted a trademark registration application to the EUIPO, but McDonald’s pushed back, claiming that the name “Supermac’s” was too similar to “Big Mac,” potentially confusing consumers. In response, Supermac’s took action in 2017, asking the EUIPO to revoke McDonald’s “Big Mac” trademark, arguing that McDonald’s hadn’t used the trademark for certain goods and services as required.

Issues

In 2014, the dispute between Supermac’s and McDonald’s began when Supermac’s spoke to expand its business in European countries. Supermac’s applied for registering a trademark in the EU, which is opposed by McDonald’s. McDonald’s said that it will create confusion with its “Mc” prefix. McDonald’s argument is based on the protection of its identity of brand identity, claiming that allowing Supermac’s to register its name can increase confusion among customers.

Reasoning

In 2019, the EUIPO favoured Supermac’s and the trademark “Big Mac”, stating McDonald’s failed to prove genuine use of the trademark. After that, McDonald’s makes the decision and submits additional evidence like affidavits, promotional materials and sales data. The EUIPO Board of Appeal upheld McDonald’s appeal and brought back the trademark for certain goods and services. Further, Supermac’s appealed to the General Court of the EU. The outcome of the case is that McDonald’s retains the “Big Mac” trademark in the EU for meat-based products and meat sandwiches. The ruling allows Supermac’s to expand its business in the European country market.

Critique of the Trademark Revocation

Ruling lauded as a victory for small businesses, highlighting the challenges small company faces while competing against multinational companies. Many Critics point out that McDonald’s engaged in “trademark bullying”, alleging that the multinational company maintained trademarks without genuine use to stifle competition. The ruling also raises concerns among trademark holders about the potential for increased challenges to their trademarks. The EU general court decision is based on the evidentiary standards; McDonald’s failure to provide evidence led to partial revocation of the “Big Mac” trademark.

Impact of the Trademark Revocation

This case sets a significant precedent in European Union trademark law for future disputes related to trademark revocation. It represents legal mechanisms for smaller companies to challenge the larger dominance in the market. This case enables Supermac’s to work and expand its business in the fast–food industry in the EU markets without the legal disturbance of McDonald’s for trademark.

Concluding the Trademark Revocation

The McDonald’s vs Supermac’s case offers valuable insights into trademark law enforcement in the European Union. It highlights the importance of genuine use in managing and protecting trademarks. It represents the legal mechanisms for smaller companies to challenge the larger company’s dominance in the market. Ultimately, this dispute serves as an indication of the dynamic interplay between law for the protection of brand identity. The case implications are beyond the fast-food industry, they affect all businesses operating within the EU. It ensures the necessity and tricks for companies to actively use, monitor and defend their trademarks.