In a landmark ruling by the European Court of Justice (ECJ), the breadth of McDonald’s EU Trade Mark Registration for BIG MAC has been limited. The ruling follows a protracted legal battle between McDonald’s and the Irish fast-food chain, Supermac’s. This case has significant implications for trade mark law, particularly regarding the necessity of “genuine use” and the consequences of failing to prove such use.

Background of the legal dispute

McDonald’s, the global fast-food giant, registered the BIG MAC trade mark in the EU in 1996. The trade mark covered a wide range of goods, including beef and poultry products, as well as restaurant services. McDonald’s flagship burger, the Big Mac, became synonymous with the brand and enjoyed widespread recognition across Europe.

However, McDonald’s encountered a challenge when Supermac’s, a smaller, Irish fast-food chain, attempted to expand into Europe. Founded in 1978 in Galway, Supermac’s sought to register its own brand name as a trade mark within the EU. McDonald’s objected, arguing that the similarity between Supermac’s and Big Mac would confuse consumers, particularly given McDonald’s global dominance. As a result, the EU Intellectual Property Office (EUIPO) initially limited Supermac’s ability to register its name to certain products, triggering a prolonged legal battle.

Genuine use and trade mark intimidation

In 2017, Supermac’s filed a motion to partially revoke McDonald’s registration of the Big Mac trade mark for poultry products, accusing the company of engaging in “trade mark bullying.” Supermac’s alleged that McDonald’s had registered the trade mark for goods and services it did not use, effectively blocking competition. The central legal issue revolved around whether McDonald’s had made genuine use of the trade mark for poultry products, as required under EU law.

Under Article 58(1)(a) of the EU Trade Mark Regulation, a registered trade mark can be revoked if it has not been put to genuine use for a continuous period of five years. Genuine use must be more than symbolic; the mark must be used in a commercial context to create or maintain a market for the goods or services it covers. In this case, Supermac’s argued that McDonald’s had not used the Big Mac trade mark for chicken products within the relevant five-year period, which the EUIPO and subsequently the ECJ found to be valid.

The European Court of Justice’s ruling

The ECJ ruled in favour of Supermac’s, concluding that McDonald’s had failed to prove genuine use of the “Big Mac” trade mark in relation to chicken burgers and other poultry products. Consequently, McDonald’s Big Mac registration was limited and they had to remove the references to poultry products from their trade mark specification. The court also noted that McDonald’s had not sufficiently used the trade mark for restaurant services related to poultry products.

The ruling, however, was not a complete loss for McDonald’s. The fast-food giant retains protection for the Big Mac trade mark for beef burgers, the original product that popularised the name. Nonetheless, the decision may have further reaching consequences, as it could open the door for Supermac’s and other companies to use the MAC name for chicken products.

Impact on UK trade mark law post-Brexit

Following Brexit, UK trade mark law diverged from the EU framework, and rulings from the ECJ no longer apply directly to the UK. However, Supermac’s has indicated that a similar case is pending in the UK. If successful, this could further limit McDonald’s ability to protect the full scope of the Big Mac trade mark, potentially enabling Supermac’s to expand into the British market under similar legal arguments.

The UK Trade Marks Act 1994, which governs trade mark law in the UK, includes provisions similar to the EU’s requirement for genuine use. Under Section 46, a registered trade mark can be revoked if it has not been genuinely used for five years in relation to the goods or services for which it is registered. This legal principle will likely play a crucial role in any future disputes between McDonald’s and Supermac’s in the UK.

Broader implications for trade mark law

This ruling sends a strong message to multinational corporations about the importance of maintaining active use of trade marks. The ECJ’s decision is a wake-up call to trade mark holders, particularly those with large portfolios of registered marks, to ensure that they are using their trade marks in a way that satisfies the legal standard of genuine use. Failure to do so risks losing trade mark protection, as evidenced by this case.

Furthermore, the case highlights concern about trade mark bullying, a practice where large corporations register trade marks not for immediate use but as a means to prevent smaller competitors from using similar names or products. Supermac’s success in this legal battle underscores the importance of balancing trade mark rights with fair competition.

Conclusion

The Big Mac trade mark battle between McDonald’s and Supermac’s offers crucial insights into the application of trade mark law in the EU and its focus on genuine use. The ruling not only marks a significant victory for smaller businesses but also serves as a warning to trade mark holders about the importance of actively using their trade marks. As the case continues to unfold in the UK, it will be interesting to see whether similar principles apply under UK law, especially in the post-Brexit legal landscape.

Ultimately, this case reaffirms the essential balance in trade mark law between protecting intellectual property rights and fostering competition in the marketplace. For more information on this case or other questions regarding trade mark law, please contact one of our attorneys.