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The Big Mac Battle: McDonald's Trademark Loss in the European Union

In 2019, the European Union Intellectual Property Office (EUIPO) made a landmark decision that sent shockwaves through the global business community. The EUIPO revoked McDonald's trademark for its iconic "Big Mac" burger in the European Union, following a challenge by an Irish fast-food chain, Supermac's. This case highlights the complexities of trademark law, the importance of active trademark use, and the potential vulnerabilities even global giants like McDonald's face in protecting their intellectual property. This analysis will delve into the history of the dispute, the nature of the legal challenge, the EUIPO's decision, and the broader implications for businesses operating in the EU.

McDonald's, founded in 1940 in California, USA, has grown to become one of the world's largest fast-food chains. The company introduced the Big Mac in 1967, and it quickly became a signature product, recognized globally. In 1996, McDonald's registered the "Big Mac" trademark with the EUIPO, covering various classes including foodstuffs and restaurant services.

Meanwhile, in Ireland, Pat McDonagh founded Supermac's in 1978. The company grew to become Ireland's largest indigenous fast-food chain. In 2014, Supermac's sought to expand its operations into the UK and other parts of Europe. However, McDonald's objected to Supermac's trademark applications, arguing that the name "Supermac's" was too similar to "Big Mac" and could confuse consumers.

Nature of the Dispute:
The dispute began when Supermac's applied to register its company name as a trademark in the EU. McDonald's opposed this application, citing the similarity between "Supermac's" and "Big Mac." This opposition was part of a broader pattern; McDonald's had previously blocked Supermac's attempts to register trademarks in Australia and the UK.

In response, Supermac's took an aggressive countermove. In 2017, it filed a request with the EUIPO to cancel McDonald's "Big Mac" trademark, accusing the fast-food giant of "trademark bullying." Supermac's argued that McDonald's was improperly using its trademark rights to prevent competition, rather than to protect a product it actively used.

Under EU trademark law, a trademark can be revoked if it has not been put to "genuine use" in the EU for an uninterrupted period of five years. Supermac's claimed that McDonald's had not sufficiently demonstrated such use for the "Big Mac" trademark.

McDonald's defense rested on providing evidence of the Big Mac's use. They submitted affidavits from company executives, brochures, packaging, and print-outs of advertising posters and websites. They argued that the Big Mac is sold in McDonald's restaurants across the EU and is a well-known product.

Decision: In a surprising turn of events, the EUIPO sided with Supermac's. In January 2019, it revoked McDonald's "Big Mac" trademark, stating that the company had not proven genuine use of the mark in the EU.

The EUIPO found McDonald's evidence insufficient. It criticized the affidavits as merely statements from interested parties, not independent sources. The brochures and packaging were deemed insufficient because they didn't show the extent of their distribution or whether they led to actual sales. The EUIPO was particularly critical of the website printouts, noting they didn't prove that EU consumers had actually visited these sites or made purchases.

The decision underscored that proving trademark use isn't just about showing that a product exists, but demonstrating real commercial presence. The EUIPO wanted to see figures on sales volumes, market share, or advertising investments - data McDonald's didn't provide.

This ruling was a significant blow to McDonald's. It meant that, at least temporarily, anyone in the EU could use the name "Big Mac" for their products without infringing McDonald's rights. It also cleared the way for Supermac's to expand its brand in Europe.

Implications and Aftermath:
The case sent shockwaves through the business and legal communities. It demonstrated that even ubiquitous brands like McDonald's aren't immune to trademark challenges. The decision highlighted several key points:
  • Use it or Lose it: EU trademark law is based on the principle that rights should be granted to those who actively use their marks. Companies can't just register trademarks to block competitors; they must show genuine commercial use.
  • Quality over Quantity of Evidence: The EUIPO's critique of McDonald's evidence shows that proving use isn't just about submitting lots of documents. Evidence must be specific, independent, and show real market impact.
  • David vs. Goliath - could backfire: The case was seen as a victory for smaller businesses against corporate giants. It suggested that "trademark bullying" - using trademark rights to stifle competition rather than protect a brand - could backfire.
  • Territorial Nature of IP Rights: This case underscored that intellectual property rights are territorial. Even global recognition doesn't guarantee protection if a company can't prove use in the specific jurisdiction.
However, the story didn't end there. McDonald's appealed the decision. In 2020, the EUIPO's Board of Appeal overturned the original ruling, reinstating McDonald's "Big Mac" trademark. The Board found that the original decision set too high a bar for proving use, especially for well-known marks like "Big Mac."

The appeal decision acknowledged that McDonald's evidence could have been stronger, but it was sufficient given the Big Mac's fame. The Board noted that it's "common knowledge" that McDonald's operates in the EU and sells Big Macs. This suggests that for very famous marks, the EUIPO might take judicial notice of their use, reducing the evidentiary burden.

Meanwhile, Supermac's did manage to register its name in the EU, as the EUIPO found it dissimilar enough from "Big Mac" not to cause confusion. This allowed Supermac's to expand into the UK and other EU countries.

The "Big Mac" case offers valuable lessons for businesses operating in the EU. It highlights the need for active trademark use and robust evidence of that use. It shows that fame alone doesn't guarantee protection; companies must diligently maintain and defend their marks.

The case also illustrates the complexities of EU trademark law. The contrast between the original decision and the appeal underscores ongoing debates about how to balance the rights of trademark holders with the need for fair competition. For famous marks, there's a tension between requiring specific proof of use and acknowledging their widespread recognition.

For small businesses, the case offers hope that they can challenge larger competitors' overreach. But the appeal also cautions against assuming that a big name can be easily toppled. The best strategy is often to develop a distinctive brand that doesn't invite opposition.

In today's global market, where brands can achieve worldwide recognition, the "Big Mac" case is a reminder that intellectual property rights remain fundamentally local. Companies must understand and comply with the laws in each jurisdiction where they operate. Even for a brand as ubiquitous as the Big Mac, there's no substitute for careful trademark management.

References and Citations
  • McDonald's loses 'Big Mac' trademark case in EU (2023, April 11). BBC News.
  • Kochkodin, B. (2023, April 11). McDonald's Loses Big Mac EU Trademark in Long-Running Legal Battle. Bloomberg.
  • Coyle, J. (2023, April 11). McDonald's loses 'Big Mac' trademark after legal battle in EU. The Associated Press.
  • Judgment of the General Court of the European Union, Case T-609/19 (2023, April 11).
  • McDonald's Corporation. (n.d.). Our history.
  • European Union Intellectual Property Office. (n.d.). Trademark definition.

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