McDonald’s has been defeated in a “David versus Goliath” trademark dispute over its rights to the “Big Mac” name, brought by a tiny Irish rival called Supermac’s.
The European Union’s Intellectual Property Office ruled that McDonald’s does not have the exclusive right to “Big Mac” and the “Mc” prefix in Europe, after McDonald’s tried to stop the Irish chain expanding into Europe.
Supermac’s has 116 stores, all in Ireland. It was founded in 1978, one year after McDonald’s opened its first Irish branch. By number of outlets, it is 0.3 percent of the size of McDonald’s. Supermac’s has 116 stores across Ireland and Northern Ireland. McDonald’s has 37,241 restaurants across the world.
McDonald’s first took issue with the brand in 2017 after Supermac’s tried to get permission to open stores in Great Britain and Europe.
McDonald’s claimed that a Supermac’s expansion would be taking “unfair advantage of the distinctive character and repute” of the McDonald’s brand, the “Big Mac” and “Mc” labels.
McDonald’s has owned a trademark for “Big Mac” in the EU since 1996, EUIPO documents reviewed by Business Insider show. But in an April 2017 counter-complaint, Supermac’s challenged the trademark, citing EU rules which say a trademark can be revoked if it “has not been put to genuine use.”
On Tuesday, the EUIPO sided with Supermac’s. Officials said McDonald’s had not “proven genuine use of the contested EUTM [“Big Mac” and “Mc” trademarks] for any of the goods and services for which it is registered.”
Therefore, the EUIPO said: “The application for revocation is wholly successful and the contested EUTM must be revoked in its entirety.”
This means Supermac’s can start to open stores in Europe under its own name.
The ruling also allows other companies as well as McDonald’s to use the “Big Mac” name inside the EU. Supermac’s does not have a burger called the “Big Mac.”
The ruling is effective immediately. McDonald’s can also challenge it, the EUIPO said
On the EUIPO’s trademark database the status of “Big Mac” trademark had been updated to say “cancellation pending.”
Supermac’s managing director Pat McDonagh told the Irish Examiner: “We knew when we took on this battle that it was a David versus Goliath scenario, but just because McDonald’s has deep pockets and we are relatively small in context doesn’t mean we weren’t going to fight our corner.”
“It’s been a long road, nearly four years, but it was worth it to help protect businesses that are trying to compete against faceless multinationals,” he said.
McDonagh also told the Irish Independent: “It doesn’t matter how big or how small you are, it’s great that you can get a hearing from the European office.
“I’m delighted with the result; I was hopeful for a positive outcome – but not to the extent to which we won.”