Supermac or Big Mac?

17th Jan 2019

It’s been reported on the BBC website that an Irish fast food company has won a case against McDonald's to prevent it trademarking the terms "Big Mac" and "Mc" in some instances in Europe.

The European Union Intellectual Property Office ruled McDonald’s had not proven genuine use of “Big Mac” as a burger or restaurant name.

Galway based Supermac’s said it opened the door to register its brand in Europe as a trademark.

This is not the first time McDonald’s has gone to the courts over prefixes. A European court upheld a ruling that a Singaporean company – MacCoffee – had unfairly benefited from the branding of the US burger giant due to its use of the “Mac” prefix. The ruling on Tuesday overturns this decision.

The case illustrates how combative companies can be, no matter what size or turn over, when protecting their trademarks and patents and will strongly defend what they believe is an intrinsic part of their identity.

A massive global corporation such as MacDonalds have the resources to police their brand very strictly. Supermac’s had previously attempted to expand operations into UK and Europe but the move was stopped after McDonald’s won a battle over the similarity between the name Supermac’s and Big Mac.

Most companies strive to achieve a singularity to their name – they want to attract a certain sector of the market and believe that customers build an affinity to their name, be it for price; exclusivity; quality; customer service or a combination of each. A business will strive over many years to build a reputation and customer perception to aid sales in a competitive market place, so if a rival company uses a similar name or implies a link, then they will defend it vigorously.

With the growth of startup, on line businesses, the lines become increasingly blurred and are ever more difficult for a firm to police.

The first thing to note, when dealing with the potential infringement of a trademark, is to ensure that the trademark has been registered. If this is the case then the trademark will be an official, registered trademark, which will confer various rights on the owner of the mark.

One of the rights conferred to the owner of a trademark under the Trade Marks Act 1994 is the right to prevent unauthorised use of that trademark by third parties in respect to the goods or services specified on the register. Furthermore the European Union law Agreement on Trade-Related Aspects of Intellectual Property Rights states that the owner of a registered trade mark has the exclusive right to prevent all third parties from using the similar signs for goods or services which are identical or similar to those for which the trademark is registered.

One of the key elements in order to establish whether the use of something has been authorised is to establish whether the owner of the mark has in fact consented to the use of the mark. If there has been no consent the third party will not be authorised to use it. As is the case with various other aspects of Intellectual Property Law the owner of a trademark can license or even the sell the authorised use of it to third parties.

Our litigation team have extensive experience and expertise in dealing with all aspects of intellectual property rights including trademark infringements, copyrights, patents and confidential information.

If you believe that you or your company is a victim of trademark infringement you can contact the litigation team on ph@rogers-norton.co.uk or on 01603 675639.