The UKIPO decided that Supermac’s name and logo can be registered as trade marks in the UK, despite a legal challenge from McDonald’s. McDonald’s argued that use of ‘Mac’ or 'Mc' could cause consumer confusion, potentially leading people to believe that they are buying a ‘Big Mac’, when in fact they are buying a Supermac’s product. The Hearing Officer at the UKIPO rejected McDonald’s challenge, asserting there were sufficient differences and “that no link will be made by the average consumer”.
There was a different outcome entirely at the EU Intellectual Property Office (EUIPO) in June. At an appeal court hearing, Supermac’s attempt to overthrow an earlier decision to reject its trade mark registrations in Europe, was dismissed. Supermac’s continues to trade in the Republic of Ireland.
At the EU General Court, in June 2024, McDonald’s lost another case against Supermac’s, resulting in the US fast-food company no longer having exclusive rights to the term ‘Big Mac’ to describe chicken burgers or any food products containing poultry, in the European Union, due to a lack of use.
Mark Caddle, partner and trade mark attorney at European intellectual property firm, Withers & Rogers, said:
“Supermac’s CEO has made no secret of the fact that he would like to expand operations in the UK, and this decision will make that easier. The trade mark applications that the Irish fast-food chain originally submitted to the UKIPO in April 2021 could be registered within a few weeks.
“We will have to wait and see what happens next, however. If McDonald’s decides to appeal the decision, this long-standing dispute will continue and could even end up before the UK Supreme Court - a lengthy process that could take years to complete.
“Despite this victory for Supermac’s, not all decisions are going their way. The EUIPO’s decision to reject Supermac’s appeal in June this year will be welcomed by McDonald’s. As a result, Supermac’s will not obtain registered trade mark protection across the European Union, which will deter any plans it has for launching new restaurants in the EU beyond the Republic of Ireland.
“These businesses have been battling for so long now, it is hard to imagine that the dispute will end here. Whilst there are lessons to be learned on both sides, perhaps the greatest is to ensure that your brand name, including any prefixes, suffixes or morphemes, are registered individually as trade marks, and used, in all target markets.”
