Supermac’s win eats further into McDonald’s TMs

McDonald’s monopoly over the ‘Mc’ trademark for food and drink has been reduced, with the EU Intellectual Property Office (EUIPO) handing a partial victory to Irish fast-food chain Supermac’s.

Supermac’s had previously asked the EUIPO to revoke McDonald’s ‘Mc’ trademark (EU number 10,392,835), which covered classes 29, 30, 32 and 43.

In a decision issued on July 31, the office concluded that McDonald’s had failed to prove genuine use of the mark for a range of products, including non-alcoholic beverages.

However, the EUIPO did uphold McDonald's right to use the ‘Mc’ trademark on chicken nuggets and some of its sandwich products.

Pat McDonagh, managing director of Supermac’s, said: “This latest decision by the EUIPO shows that but just because McDonald’s has deep pockets and we are relatively small, it doesn’t mean we weren’t going to fight our corner.”

According to the office, McDonald’s evidence showed use of the trademark for chicken nuggets, and not for the broad categories of foods “prepared from meat and poultry products” in class 29.

“In the present case, the Cancellation Division does not deem that use for, essentially, one type of goods is sufficient to secure use for the broad categories of the registered foods prepared from meat and poultry products … Therefore, it is concluded that genuine use was shown only for chicken nuggets in class 29,” said the EUIPO.

Supermac’s had argued that McDonald’s had filed ‘Mc’ as a defensive mark, to stop third parties from using the ‘Mc’ term, and that ‘Mc’ is a “very common prefix” for surnames throughout Ireland, the UK and the EU.

The Irish chain also claimed that McDonald’s has never used ‘Mc’ on its own, and that the term is always used in combination with another element.

“It is not a ‘Mc’ Chicken sandwich, it is a ‘McChicken’ sandwich. It is not a ‘Mc’ Rib sandwich, it is a ‘McRib’ sandwich,” said the document, citing Supermac’s arguments.

According to the EUIPO, the Cancellation Division agreed with Supermac’s that there was no evidence of use of the contested trademark alone, but only accompanied by further elements.

Both Supermac’s and McDonald’s were ordered to bear their own costs.

McDonagh added: “We had enough of this trademark bullying and thankfully a mechanism existed whereby McDonald’s will now have to cancel trademarks that they were warehousing as ammunition in a future trade war. The corporate colonialism of trying to take ownership of ‘Mc’ is now over.”

A spokesperson for McDonald's said that the EUIPO has upheld its registration for certain core menu items.

"This decision does not impact McDonald’s ability to use its 'Mc'-prefixed trademarks or other trademarks throughout Europe and the world, and McDonald’s will continue to enforce its rights," they added.

The spokesperson went on to say that McDonald’s considers its family of Mc-prefixed trademarks to be among its most valuable assets.

The decision is Supermac’s second partial branding win over McDonald’s this year.

In January, the Irish chain won its bid to cancel the ‘Big Mac’ EU trademark, after claiming that McDonald’s had used its trademark to block the expansion of Supermac’s in Europe by citing the similarity in the companies’ names.

The EUIPO, in its ruling, found that McDonald’s had not demonstrated genuine use of the mark for the five-year period before the case was filed. Two months later, McDonald’s appealed against the cancellation of its mark.

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