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5th February 2019



Playing silly burgers

Even the biggest brands need to play by the rules – and they don’t come much bigger than McDonald’s.

Image: Vytautas Kielaitis/Shutterstock

The global burger chain has thousands of trade mark registrations worldwide and spends an eye-watering amount each year maintaining and enforcing them.

But in a recent dispute with Irish burger chain Supermac, McDonald’s Mc’d up and lost its EU registration for ‘Big Mac’ for failing to prove that the trade mark had been used continuously over the last five years.

Supermac applied for an EU trade mark covering ‘Supermac’ in Class 43 (restaurant services). McDonald’s duly opposed this, citing its numerous prior registrations: ‘McDonald’s’, ‘Big Mac’, ‘McRib’, ‘McMuffin’, ‘Mc…’- well, you get the picture.

And this is where Supermac got clever – they challenged McDonald’s to prove specific use of each of these trade marks, and took the extra precaution of applying to cancel ‘Big Mac’. Doubling down on a double burger, the Big Mac was now in big trouble. Any mark which isn’t used for a period of five years or more is vulnerable to being struck off, and once a challenger has thrown down the non-use gauntlet, it’s up to the trade mark owner to prove it has actually been used.

McDonald’s duly submitted affidavits, brochures and adverts referring to Big Macs, as well as the relevant Wikipedia page. But the EU Intellectual Property Office decided this was insufficient to show that ‘Big Mac’ had been genuinely used as a trade mark in the European Union. None of the evidence was independent, originating as it did from McDonald’s itself, and none of it demonstrated any actual sales. Which isn’t to say they hadn’t ever sold any Big Macs, just that they hadn’t proved they had.

As a result, Supermac won and ‘Big Mac’ was declared invalid. Left with Egg McMuffin all over their faces, McDonald’s have unsurprisingly said they will appeal. But unless they get their act together, they risk losing one of their most important trade marks, leaving the door wide open to Supermac to expand into Europe.

It’s also given long-time rival Burger King the opportunity to have some fun at MaccyD’s expense, with Swedish outlets offering Whoppers as “Like a Big Mac, but actually big”, “Kind of like a Big Mac, but juicier and tastier” and “Big Mac-ish but flame-grilled of course”.

And you thought Brexit was the most pressing cross-border issue of the moment!

 

If you have any questions about the latest BrandSoup article or wish to discuss your intellectual property needs, please contact Thrings Partner, and BrandSoup author, Graeme Fearon or a member of the Intellectual Property team.

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