David vs. Goliath:  Supermac’s Defeats McDonald’s in Historic EU Trademark Battle

On January 15, 2019, the Irish fast-food chain, Supermac’s, won a landmark decision against McDonald’s Corporation (McDonald’s) and convinced the European Union Intellectual Property Office (EUIPO) to cancel the McDonald’s “Big Mac” trademark in the EU. Supermac’s owner Pat McDonagh was a Gaelic football player in the 1960s and his coach and teammates gave him the nickname “Supermac,” a portmanteau of his surname and Superman, after several stellar games. McDonagh opened his first restaurant in 1978, which has grown to over 100 Supermac’s across Ireland and Northern Ireland. In February 2017, Supermac’s sought registration of its mark in Britain and Europe to which McDonald’s objected, claiming that further expansion of Supermac’s would be “unfairly taking advantage of the distinctive character and reputation” (“McDonald's, Beaten by Irish Small Rival Supermac's, Loses Big Mac's Rights,” Tech2.Org) of the McDonald’s brand, especially since both restaurants served substantially similar food.

Two months later Supermac’s filed suit with the EUIPO, arguing that customers were not confused and seeking cancellation of all Mc-based marks that McDonald’s was not using. Indeed, McDonald’s has trademarked words for products it does not sell, including McHome, McWallet, McJob, McChoice, McCountry, McNet and McInternet, among others. Supermac’s pointed out that the two businesses had traded without confusion in Ireland for forty years even where the two restaurants are in close proximity to each other and, in fact, McDonald’s had never before alleged trademark infringement against Supermac’s in Ireland.  The turning point for Supermac’s was that McDonald’s had trademarked the term “SnackBox,” a food product sold by Supermac’s but not sold by McDonald’s. Supermac’s does not even sell a burger called a “Big Mac” so in its opposition to expand its mark in Europe and Britain application, Supermac’s argued that McDonald’s true motivation in opposing its expansion was not to avoid confusion but rather to stifle legitimate competition.  Superman’s claimed that because McDonald’s is a large multi-national corporation, it was simply acting as a trademark bully trying to create a monopoly for the Mc prefix, not only for food and restaurant services, but also for other products McDonald’s does not sell.

Remarkably, the EUIPO sided with Supermac’s, ruling that McDonald’s had not established genuine use of the Big Mac mark in the five years prior to the case being filed in 2017.  In the European Union, a trademark can be canceled if it “has not been genuinely used.”(European Union Intellectual Property Office). In its defense, McDonald’s submitted its website printouts, posters, packaging and affidavits from company representatives attesting to “Big Mac” sales in Europe. However, the EUIPO ruled that the affidavits needed to be supported by other types of evidence, and that the website and other promotional materials did not provide that support. From the website printouts “it could not be concluded whether, or how a purchase could be made or an order could be placed.”  Further, “even if the websites provided such an option, there is no information of a single order being placed” (McDonald’s Loses ‘Big Mac’ Trademark Case to Irish Chain Supermac’s, Reuters) through the internet. As a result of the EUIPO ruling, which McDonald’s can appeal, Supermac’s is free to expand throughout Europe, and other companies can now use the name “Big Mac” in the EU. This decision is a seminal victory by small competitors against large multi-nationals, and McDonald’s has historically been extremely litigious in protecting its trademarks. In 1993, McDonald’s won a court order blocking a New York dentist from selling services under the name “McDental,” and in 2016, McDonald’s blocked an effort by a Singapore company to register “Maccoffee” as a trademark in the EU.—James V. Fazio, Esq.