The European Intellectual Property Office revokes the registration of the name of the famous hamburger after a lawsuit brought by an Irish fast food chain.
The American McDonald’s burger company no longer has the exclusivity of the Big Mac brand, the name of one of its star products. It has lost it in a tough battle between the US multinational and the Irish fast food chain Supermac’s. After a legal battle that began in 2017, the EU Intellectual Property Office (Euipo) has finally found the Irish right and revoked rights to the Big Mac name McDonald’s had registered, which has already announced it will appeal this decision.
A Euipo resolution, dated 11 January, resolves that the American chain has not demonstrated the “extent of use” of the mark throughout the EU, but only in some countries. And it is precisely this territorial control that Supermac sought to circumvent. The company, based in the city of Galway and with 106 restaurants scattered throughout Ireland and Northern Ireland, wants to cross borders and expand into the rest of the United Kingdom and even Europe. In 2014, the Irish applied for registration of the Supermac brand on the continent. But the U.S. firm cut him off. The main argument was that the names Big Mac and Supermac were too similar and could confuse customers. The IP agency proved them right.
Three years later, in April 2017, the company founded by Pat McDonagh returned to the charge and presented to the Euipo, a European entity located in Alicante, a nullity action for lack of use of the insignia and main hook of the McDonald’s menu. The Irish claimed that the name Big Mac was not used continuously throughout the EU. And under current law, if a trademark is not used within five years, it can expire.
Data and Wikipedia entries
At the request of the EU office, the Americans provided sales data for Big Mac between 2011 and 2016 in Germany, France and the United Kingdom, as well as brochures and advertising posters, screenshots of 18 of their websites in Europe and even the Wikipedia entry dedicated to their most famous product. But, in Euipo’s opinion, the use of the brand has not been proven in a significant part of the European Union. A spokesman for McDonald’s has told EFE that they will appeal and that, despite the resolution, the firm “owns and can claim the rights to the trademark ‘Big Mac’ in Europe and, therefore, also in Spain. This decision has forced the decision to pass to the board of appeal of the Community body, in which the multinational hamburger may provide new evidence. From there, the decision could even be referred to the EU Court of Justice, based in Luxembourg.
McDonagh, which opened its first store in a village near Galway in 1978, has been exultant in a communiqué published by the English newspaper The Guardian, which broke the news on Tuesday. He claims this litigation was a victory for David over Goliath. And he points out that multinationals such as McDonald’s appropriate brands that they do not use with the simple aim that no one can market them. “They registered the SnackBox brand,” one of Supermac’s best-known products, “even though they don’t actually offer any products under that name,” the statement says, by way of example. “Now, what the EU is telling them,” continues the Irish businessman, “is simply use it or lose it,” in reference to intellectual property registrations.
