The General Court of the European Court of Justice has upheld a complaint by the Irish fast-food company Supermac’s against the global giant McDonald’s in a long-running dispute over the use of the "Big Mac" trademark. The court ruled that McDonald's could not use the trademark when it came to poultry products such as chicken sandwiches.
The ruling also deprives McDonald’s of using the term Big Mac as a protected trademark when branding its restaurants, drive-through facilities and for the preparation of carry-out food. Supermac’s has said that historically McDonald’s used the Big Mac trademark to prevent the Irish company from naming its outlets "Supermac’s".
McDonald’s initially registered the Big Mac trademark in the European Union in 1996. The General Court found that McDonald's had not made genuine use of the trademark.
However, in 2017 Supermac's applied to the EU Intellectual Property Office (EUIPO) to have the trademark revoked on the basis that McDonald’s had not made genuine use of it in the previous five years. In 2019, the EUIPO partially ruled in Supermac’s favour, revoking McDonald’s registration of the Big Mac trademark.
As a result, Supermac’s was permitted to use the term Big Mac name on any food items it sold. However, the EUIPO also said that McDonald’s could still use the trademark for chicken sandwiches and other poultry products, as well as in connection with McDonald’s outlets and drive-ins.
Supermac’s challenged this qualification before the European Court of Justice (ECJ). Following the 2019 decision, Supermac’s reportedly claimed that McDonald’s had used the Big Mac trademark to try and block the company’s expansion into the UK and Europe.
The ECJ ruled that McDonald's would also lose the Big Mac trademark when it comes to poultry products and how it branded its restaurants and drive-through operations. The General Court found that McDonald’s had not made genuine use of the trademark, again within a continuous period of five years in the European Union. The judgment therefore annuls and alters the original finding by the EU’s intellectual property office. The court found that McDonald’s has not made genuine use of the trademark to sell "chicken sandwiches" and "foods prepared from poultry products".
Nor had McDonald’s made genuine use of the Big Mac trademark when opening restaurants and drive-through outlets. The court found that the evidence submitted by McDonald’s did not indicate the extent of use of the trademark in connection with poultry products, in particular when it came to the volume of sales, the length of the period during which the mark was used and the frequency of use.
The option of appealing the outcome to the European Court of Justice remains for McDonald's. In a statement, McDonald's said the EU General Court’s decision "does not affect our right to use the 'Big Mac’ trademark". "Our iconic Big Mac is loved by customers all across Europe, and we’re excited to continue to proudly serve local communities, as we have done for decades."
Meanwhile, Supermac's managing director Pat McDonagh welcomed the decision of the General Court of the European Union to revoke the Big Mac registration. "This is a significant ruling that takes a common-sense approach to the use of trademarks by large multi-nationals. It represents a significant victory for small businesses throughout the world," Pat McDonagh said.
"We knew when we took on this battle that it was a David versus 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," he said. "We have been saying for years that they have been using trademark bullying. They trademarked the SnackBox, which is one of Supermac's most popular products, even though the product is not actually offered by them," Mr McDonagh added.
Asked if he now intends to expand into Europe, Pat McDonagh said the decision now gives them a lot of options. Mr McDonagh said the decision by the European Trademark Office is also an indication of how important the European institutions are to help protect businesses that are trying to compete against faceless multinationals.
"We can be proud to be part of a Europe in which all are equal. Small is no longer a disadvantage. We wholeheartedly welcome this judgement as a vindication of small businesses everywhere that stand up to powerful global entities," he added. Asked if he now intends to expand into Europe, Mr McDonagh said the decision now gives them a lot of options.
Speaking later to RTÉ's News at One, Mr McDonagh said the restaurant can now look to expand its operations aboard having been "stifled". "Once it gets trademarked and, it does not interfere with anyone else. "All we wanted to do was to be able to use our own brands. They objected to our snack box registration as well. "So, we want to be able to use our own brand and names across the country and across the EU, and that is really what today’s decision is all about," he said. Mr McDonagh added the legal case came at a cost but it was "well worth it".