A BIG MAC Counterattack Wins the Day

By Jeffrey M. Kaden

In a recent legal proceeding that took place in the EU Intellectual Property Office (EUIPO), McDonald’s lost its European trademark rights to the well- known BIG MAC name. An unexpected decision by the European Union ruled in favor of a relatively unknown Ireland-based fast-food chain known as Supermac’s.

During the proceeding, the Irish company accused McDonald’s of “trademark intimidation, trademarking names and putting them aside to be used against future competitors.” According to the records of the EUIPO, the name “Big Mac” had been protected in the EU for more than 20 years under international trademark Classes 29, 30, and 42 for foods, sandwiches, and the services of franchise restaurants.

In the decision, McDonald’s European trademark registration for the BIG MAC name was affirmatively revoked. The EUIPO held that the McDonald’s was not using the BIG MAC trademark in accordance with European trademark law. It found that McDonald’s had not proven genuine use in Europe of the BIG MAC mark in connection with the goods of its European trademark registration. In particular, the EUIPO held that the proof McDonald’s submitted to show it had “genuinely used” its Big Mac trademark in recent years was not persuasive.

From this author’s standpoint, the decision of the EUIPO was overly technical and seemed to purposely avoid reality. The EUIPO found that the evidence McDonald’s submitted regarding its use of the BIG MAC name in Europe, including websites, posters, packaging, brochures as well as affidavits from company representatives located in Germany, France, and the UK, was not sufficient. The EUIPO said about the websites that “it could not be concluded whether, or how, a purchase could be made or an order could be placed.” In addition, the European regulating body took exception to the brochures because there had been no evidence provided as to whom the brochures were sent or how they were disseminated. Although the EUIPO admitted that McDonald’s did submit some evidence of use, it concluded that McDonald’s did not demonstrate the extent of its use of the BIG MAC name.

Not surprisingly, McDonald’s has said that it intends to appeal.

The ruling ostensibly paves the way for other companies to use and promote the BIG MAC name in EU member countries, although such uses would undoubtedly be challenged by McDonald’s, presumably on the basis of an unfair competition, passing off, or some other plausible legal theory.

Victorious Supermac’s said it now intends to expand into the United Kingdom and Europe. It said it had never had a product called the BIG MAC, but that McDonald’s had argued that names ”Supermac’s” and BIG MAC were too similar and therefore it decided to file an action to block the Irish chain’s expansion. That decision by McDonald’s obviously backfired. Supermac’s responded to McDonald’s filing by asking the EUIPO to cancel McDonald’s use of the trademark. Supermac’s counterattack strategy proved to be quite successful.