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6 June 2024NewsTrademarksMuireann Bolger

‘It’s worth trying against the odds’: Inside McDonald’s 'Big Mac' showdown

McDonald’s trademark setback in Europe offers some salutary lessons for big brands believing they’re too big to fail, finds Muireann Bolger, who speaks to Supermac's counsel and others.

McDonald’s has seen its ‘Big Mac’ trademark narrowed to red-meat burgers at the EU General Court, marking a decisive turning point in its long-running clash with Irish fast food chain Supermac’s.

Not only does the ruling pave the way for the Galway-based company to fulfil a long-held ambition to expand the business outside of Ireland, it also offers a cautionary tale to globally recognised brands.

Few brands are as well known as the US fast food giant with the golden arches.

Founded in 1940, McDonald's is the world's largest multinational food chain, serving 69 million customers daily in over 100 countries at more than 40,000 locations.

In a lighthearted nod to the ubiquity of the brand’s best-selling product, The Economist introduced the Big Mac index in 1986 to gauge whether currencies are at their ‘correct’ level—a system still in place nearly four decades later.

But as this case shows, reputation and familiarity count for little if genuine use of a mark isn’t proven before a court.

‘Being small is no disadvantage’

The decision, delivered by the sixth chamber of the EU General Court yesterday, June 5, revoked McDonald’s exclusive ‘Big Mac’ registration for ‘chicken sandwiches’ on the basis that the company had failed to prove genuine use of the mark in connection to the goods and services at the heart of the dispute.

Additionally, the ruling revoked the US brand’s registrations for "foods prepared from poultry products" and “services rendered or associated with operating restaurants or other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out food”.

Supermac’s founder Pat McDonagh hailed the ruling as “a significant victory for small businesses throughout the world”, and one that proved that “being small is no longer a disadvantage”.

McDonagh is perhaps used to playing against the odds—and winning. Around the same time that the Big Mac index was gaining traction, McDonagh earned the sobriquet 'Supermac' after emerging as a star player in Gaelic football.

This then became the choice of name for his business, ‘Supermac's’, laying the grounds of the closely-watched legal battle with the US fast food brand a few decades later.

At first glance, the chances of the Irish company prevailing at the general court seemed slim. Verena von Bomhard, partner of Bomhard IP, who acted on behalf of Supermac’s alongside Hazel Tunney, partner at Tomkins, tells WIPR the statistical likelihood of winning an action before the general court against a Board of Appeal decision is quite low—well below 20%.

“One key lesson from this case is that it's sometimes worth trying against odds: But sometimes you feel it is worth it, and this was one such case,” she explains.

And while Supermacs won three out of its six arguments, von Bomhard is clear that her team prevailed on the ones that mattered.

“While we won three and lost three points, for us the main point was about the services. But the three points that we won were (much) more important to us than the three points where we lost,” she laughs.

Describing this week’s judgment as “a common-sense approach to the use of trademarks by large multinationals”, McDonagh insisted that it “was a vindication of small businesses everywhere that stand up to powerful global entities”.

‘Trademark bullying’

“We knew when we took on this battle that it was a David v Goliath scenario. The original objective of our application to cancel was to shine a light on the use of trademark bullying by this multinational to stifle competition. We have been saying for years that they have been using trademark bullying.

“This decision  is also an indication of how important the European institutions are to help protect businesses that are trying to compete against faceless multinationals.”

In response to the judgment, McDonald’s reiterated the strength of its trademark for its famed beef sandwich.

“The decision by the EU General Court does not affect our right to use the ‘Big Mac’ trademark. The Big Mac trademark is incredibly strong throughout the world, including in the EU, and this decision will not in any way impact our ability to use or to protect the trademark against infringements.

“McDonald’s has held the EU Big Mac trademark registration since 1996 and it remains in full force and effect for the iconic sandwich that our fans around the world have come to know and love.”

Aaron Cole, senior associate in the IP team at Ashurst, explains that while the judgment does weaken its registered rights, the fast food giant can still use its mark and may have other avenues to explore.

“It is important to note that this result does not prevent McDonalds from using 'Big Mac'. And before anyone looks to set up an EU burger chain selling 'Big Mac' burgers, McDonalds likely still has rights it can rely on to prevent competitors from using its brand, including with chicken,” says Cole.

Case background

The case arose in 2017 when McDonald’s opposed two EU trademark applications for Supermac’s and Supermac’s logo, based on their own EU trademark registration for ‘Big Mac’.

In response, Supermac’s filed a non-use cancellation action against the ‘Big Mac’ registration for all goods and services. EUIPO then favoured Supermac’s, raising more than a few eyebrows when it cancelled the registration for ‘Big Mac’.

Inevitably, McDonald's appealed, and the decision was overturned for almost all goods and services, including ‘restaurant services’. Supermac’s then took the action to the General Court.

A ‘common-sense’ ruling

Von Bomhard reinforced McDonagh’s view that common sense eventually prevailed, telling WIPR that the decision had rectified two “overreaching” decisions.

“In 2019, it was reported—wrongly—that the trademark ‘Big Mac’ had been cancelled. That was wrong because that decision was a first instance decision, which was open to appeal, and it was obvious that McDonald's would appeal because we all know that Big Mac is used as a trademark for (red) meat burgers.”

The board of appeal, she adds, aimed to correct “the harm” done by the first instance decision, but “overreached in the other direction” by maintaining the mark for things it simply isn’t used for, eg, chicken sandwiches and services.

“We all know that Big Mac is used as a trademark for (red) meat burgers, but we also know that Big Mac is not used for anything else, and it's certainly not used for services—which are McDonald's, McDrive, McCafe, etc.”

“Those are the brands under which McDonald's offers its fast food, carry-out and drive through services. But the Big Mac is a particular product, just like Chicken McNuggets.”

Evidence is all that matters

Here’s the crux: while McDonald’s did attempt to extend the ‘Big Mac’ mark to chicken sandwiches in recent years, it failed to provide the necessary evidence that it had been put to sufficient use.

The court put it bluntly: the evidence submitted “failed to provide any indication of the extent of use of the mark in connection with those goods for the purposes of case-law”, particularly in terms of the “the volume of sales, the length of the period during which the mark was used and the frequency of use”.

The evidence, it continued, merely amounted to printouts of advertising posters, screenshots of a television advertisement which was broadcast in France in 2016 and screenshots from the Facebook account of McDonald’s France in 2016—-making it possible to deduce in what quantities, or with what regularity and recurrence, the goods concerned were distributed.

“That evidence cannot therefore on its own suffice to establish that the commercial use of the contested mark in connection with ‘chicken sandwiches’ was real,” concluded the court.

For Matthew Harris, trademark attorney at Pinsent Masons, this finding is “a huge wakeup call” and a warning to owners of well-known trademarks that they cannot simply rely on the premise: “it is obvious the public know the brand, and we have been using it”.

“The case highlights that even global renowned brands are held to the same scrutiny when having to evidence genuine use of a trademark in a given territory.

“The evidence needs to show the trademark being continuously used in the five year period in relation to all of the registered goods/services or risk losing it when you cannot evidence genuine use,” says Harris.

Carl Steele, partner at Ashford, agrees that the judgment is “a salutary lesson” for big brand owners.

“They need to retain credible evidence to prove that they have made genuine use in trade of the trademarks they register and, if called upon to prove the same, they need to file that evidence with the relevant trade mark office or court,” he urges.

A product, not ‘an experience’

After faltering on its evidence, McDonald's countered that ‘Big Mac’ was more than just a product, it was an ‘experience’. But this too, failed to pass muster with the general court.

“The argument was that you walk into McDonald's, and the ‘Big Mac Meal’ is not just the burger— it's the whole experience of McDonald’s. And we argued: the meal is called the ‘Big Mac Meal’ because it has a Big Mac, a beverage, French fries, and ketchup,” explains von Bomhard.

“If anything, it's a product combination. And it remains a product; this is what the general court has endorsed.”

Semantics aside, what’s the takeaway for big brands with a tendency to underestimate their smaller rivals?

“Be careful when picking your fight,” suggests von Bomhard.

“Always think of whether a particular issue is worth it. The counterparty may put up a very fierce counter fight and at the end you may lose more than you win.”

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