Small Irish business wins ’David and Goliath’ trade mark case against McDonalds

Small Irish business wins ’David and Goliath’ trade mark case against McDonalds

An Irish fast-food company has claimed a famous victory over one of the biggest brands in the world. Supermac, a beloved restaurant chain throughout Ireland and Northern Ireland, has successfully challenged McDonalds over its trade mark for ‘Big Mac’ in the European Union.

The case arose after Supermac attempted to expand into the EU, but was prevented by McDonalds owing to the alleged similarities between the terms ‘Supermac’ and ‘Big Mac’.  Supermac responded by applying to have McDonald’s ‘Big Mac’ EU trade mark registration revoked on the grounds of non-use.  Although McDonald’s filed evidence of use, the European Intellectual Property Office (EUIPO) ruled that the evidence was insufficient.

McDonald’s has a reputation for vigorously enforcing its trade marks around the world.  In fact, in 2016, a European court ruled against a Singaporean company launching ‘MacCoffee’ in the EU, agreeing that the brand would unfairly benefit from the burger giant’s reputation.

Now the tables are turned. 

Supermac’s managing director, Pat McDonagh, described the case as a “David versus Goliath scenario”, referring to the huge disparity in the size of the companies. The Irish chain accused McDonalds of using “trademark bullying” to inhibit the growth of smaller brands, hailing the ruling as “the end of the McBully”.

While we are almost certain McDonald’s will appeal (because they have lost on a technicality), it is an interesting case which will undoubtedly encourage other Davids to follow suit. 

Victor Caddy at Wynne Jones IP says “It goes to show that it is always worth challenging a registered trade mark that is old enough to be vulnerable to cancellation on the grounds of non-use because you never know if the trade mark owner has access to, or the inclination to find, the evidence it needs to prove genuine use”. 

“In 2016, the UKIPO revoked the UK registration of Gucci’s famous interlocking G’s logo, again on the grounds of non-use, and the inadequacy of the evidence Gucci filed in defense of its registration”.  

“For trade mark owners (Davids as well as Goliaths), these decisions highlight the importance of archiving evidence to demonstrate genuine use of a trade mark, and, what-is-more, archiving evidence that is as specific and detailed as possible.  You never know when you may need it.  And the consequences of not being able to prove genuine use can be catastrophic.

At Wynne Jones IP we are experts in trademark law, supporting our clients in creating enforceable trade mark registrations and valuable business assets, which lead to commercial prosperity and maximum IP protection within your specialist field.

For more information on our trade mark services please visit https://www.wynne-jones.com/our-ip-services/trade-marks/

Related News

Patent Emergency! What to do when you’ve (accidentally) disclosed your invention before you’ve filed a patent application
news

Patent Emergency! What to do when you’ve (accidentally) disclosed your invention before you’ve filed a patent application

One of the cornerstones of the patent system in many countries, including the UK, is the need to apply for a patent before disclosing your invention publicly. This is because such ‘self-disclosure’ can be used to invalidate a subsequently filed patent application. That’s a horrible situation, because you may have really shot yourself in the foot in terms of getting patent protection in the UK and in many other countries. Therefore, we firmly advise that you keep the invention secret before filing a patent application on the invention.

IP expert praises one million women in STEM roles to mark International Day of Women and Girls in Science
news

IP expert praises one million women in STEM roles to mark International Day of Women and Girls in Science

A leading intellectual property expert has said it is “incredibly encouraging” to see almost one million women in STEM roles for the first time, but called for continued action to support this upwards trend.

IP expert claims Aldi “copycat” make up could be damaging to bigger brands
news

IP expert claims Aldi “copycat” make up could be damaging to bigger brands

Aldi’s newly released, discounted beauty products have been accused of “potentially infringing” major labels including Benefit, Nars, and Charlotte Tilbury.

EPO Board of Appeal finds that plants *ARE* patentable at the EPO - Rule 28(2) EPC is unenforceable
news

EPO Board of Appeal finds that plants *ARE* patentable at the EPO - Rule 28(2) EPC is unenforceable

We have previously reported on the introduction of new Rule 28(2) EPC regarding the patentability of plants and animals obtained by “an essentially biological process”. As detailed in our November 2018 article, the first case to go to appeal was scheduled to take place on 5 December 2018. That hearing has now taken place and a decision has issued.

 

2018 Diversity Report
news

2018 Diversity Report

Here at Wynne-Jones IP, we’re big on Diversity, Equality and Inclusion. To celebrate it being IP Inclusive week, we’ve released our Diversity Report for 2018.

news

Mental health in intellectual property – breaking down barriers

Mental illness is frequently referred to as the ‘last taboo'.

First case to go to appeal at EPO since new Rule 28(2) EPC was implemented
news

First case to go to appeal at EPO since new Rule 28(2) EPC was implemented

Last July we reported1 on the introduction of new Rule 28(2) EPC regarding the patentability of plants and animals obtained by “an essentially biological process”.

Following this, a case2 is now going to appeal at the EPO to contest the interpretation and validity of this new Rule.  Significantly this will be the first case to go to the Boards of Appeal since Rule 28(2) EPC was implemented. Oral proceedings are scheduled to take place on 5th December 2018.3

5 common mistakes in IP
news

5 common mistakes in IP

Your IP is too important not to be done properly, so what common mistakes are made when it comes to intellectual property?

aipex logo aipex logo aipex logo