Pat McDonagh, who owns a chain of burger restaurants in Ireland, has won a landmark case against McDonald's over the use of the “Big Mac” trademark. McDonagh, who has been called Supermac since he was a teenager after a stellar football match, argued that he should have the right to use the name for his business.
McDonald’s, which trademarked “Big Mac” in 1996 in Europe as a burger or restaurant name, had claimed that Supermac’s intention to expand beyond Ireland would create confusion for consumers. Supermac, based in Galway, requested that the European Union Intellectual Property Office (EUIPO) rescind McDonald’s use of the “Big Mac” trademark, allowing Supermac to open locations across Europe.
“We’re delighted. It’s a unique victory when you take on the golden arches and win,” McDonagh said. “This is a victory for all small businesses. It prevents bigger companies from hoarding trademarks with no intention of using them.”
The EUIPO, located in Alicante, Spain, ruled that McDonald’s had no rightful claim over the use Big Mac. McDonald’s has a right to appeal the decision.
“We said there’d be no confusion. Big Mac and Supermac are two different things,” said McDonagh, who opened the first Supermac restaurant in Ballinasloe, Galway, in 1978. The company now has 106 locations across Ireland and Northern Ireland. “They trademarked the SnackBox, which is one of Supermac’s most popular products, even though the product is not actually offered by them. The EU is basically saying either use it or lose it.”
McDonagh pointed out that the EUIPO ruling coincided with the Brexit vote in Westminster. He said the decision demonstrated the value of European Union membership. “You can go to the EU and get a fair hearing,” he affirmed.
According to Willajeanne McLean, a law professor at the University of Connecticut, McDonald’s has a history of being “extremely litigious” when it comes to trademark law and does not like to lose. In 1993, McDonald’s won a court order preventing a dentist in New York from advertising services under the name “McDental,” and in 2016, the burger chain blocked a Singapore company’s effort to register ‘MACCOFFEE’ as an EU trademark.
In response to the ruling, McDonald’s has released a statement saying that they were disappointed in the EUIPO’s decision and consider that the office did not take into account the evidence submitted by the chain. They added that they intend to appeal the decision, which they believe will be reversed by the EUIPO Board of Appeals.
The EUIPO, founded in 1994, is responsible for intellectual property rights within the European Union. Each year, it registers approximately 135,000 EU trademarks and nearly 100,000 designs. The EUIPO has five working languages – English, French, German, Italian and Spanish – and processes applications in 23 official languages of the EU.