An Irish Burger Chain Claims a Trademark Win Over McDonald’s

https://www.nytimes.com/2019/01/16/business/supermacs-big-mac-mcdonalds.html

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DUBLIN — A European Union regulator has ruled that McDonald’s must give up trademark rights to one of its cornerstone products — the Big Mac — in a long-running dispute with an Irish fast-food chain called Supermac’s.

The decision is potentially a big reversal for McDonald’s, which has argued that Supermac’s sounds confusingly similar to Big Mac. Earlier rulings from the European Union’s Intellectual Property Office in favor of McDonald’s had forced Supermac’s, a string of restaurants mainly in rural Ireland, to shelve its plans to expand in Europe.

But last week, the office accepted the Irish chain’s argument that McDonald’s had not properly registered its Big Mac trademark. It was an unlikely victory for a company with annual revenue of about $93 million over one taking in $22.8 billion.

Pat McDonagh, the founder and owner of Supermac’s, said McDonald’s had become a global “trademark bully.”

“The name Supermac comes from when I used to play Gaelic football — that was my nickname as a boy,” he said. “We felt we should be allowed to use any part of my own name we liked so long as it doesn’t infringe on anyone else’s name.”

McDonald’s, which did not immediately respond to requests for comment, can appeal the decision.

The dispute dates to 2014 when McDonald’s — famously defensive of its brands and trademarks — opposed Supermac’s application for a European Union trademark for its name.

McDonald’s cited its company name and many “Mc”-branded products — McFlurry, McNuggets, McMuffin. But the case came down to the similarity between Supermac’s and Big Mac, the only McDonald’s brand using Mac instead of Mc. (Mac is a common Irish and Scots surname prefix, meaning “son of,” and is often shortened to Mc.)

At the time, the Intellectual Property Office ruled that the fact that both Macs came after a similar qualifier — Super and Big — could “result in a likelihood of confusion.”

In response, Supermac’s argued that McDonald’s had never correctly registered its right to the Big Mac trademark in the first place.

The Big Mac is probably as well known in Europe as it is in its native United States. It has been 25 years since Quentin Tarantino’s cult movie “Pulp Fiction” featured a discussion about hamburger nomenclature in France, where — thanks to the metric system — a Quarter Pounder is called a Royale With Cheese but “a Big Mac’s a Big Mac.”

Supermac’s lawyers contested the process by which the brand had been legally trademarked, and the Intellectual Property Office ultimately agreed. It found that the documentation provided by McDonald’s was not sufficient to show that Big Mac had been “put to genuine use in the union for the goods or services for which it is registered” during the requisite previous five years.

“If you have a registered trademark, you have to use it or lose it,” said Glen Gibbons, an Irish barrister and expert on intellectual property who was not involved in the case. “Your trademark can be challenged on grounds of lack of use. It is then incumbent on the trademark owner to show that they were really using the trademark and selling it in a substantive part of the E.U.”

The proof furnished by McDonald’s included internally generated company material and a printout of a Wikipedia entry on the history of the Big Mac.

“As far as the printout from en.wikipedia.org is concerned, it is noted that Wikipedia entries cannot be considered as a reliable source of information, as they can be amended by Wikipedia’s users,” the judgment noted.

Having won his case, Mr. McDonagh plans to register the Supermac’s trademark Europewide and resume planning for an expansion into British cities with large Irish populations.

The case has been greeted with pleasure in Ireland, where Supermac’s has become something of a national institution. Founded in 1978 in small-town Ballinasloe, County Galway, Supermac’s has 102 outlets in the Republic of Ireland and four in Northern Ireland. (McDonald’s has about 37,000 restaurants in more than 100 countries.)

Mr. Gibbons, the trademark lawyer, said he thought McDonald’s was likely to appeal what appeared to be quite a technical decision. The two chains might also decide to negotiate a settlement.

And a further complication might come into play: If Britain leaves the European Union without a trade deal in March, the trademark litigation will abruptly cease to have any jurisdiction there.

“We don’t know what’s going to happen — maybe it won’t happen at all,” Mr. McDonagh said of a no-deal “Brexit.” “It does make common sense, as far as I can see, to leave things as they are.”