Fast food giant McDonald's has been faced with the partial loss of their EU trade mark for one of their most popular products, the Big Mac. The trade mark was first registered in 1996 but has now lost protection for poultry products.
This decision comes following a dispute with the Irish fast-food chain Supermac's, which began in 2015 when Supermac's sought to register its name as a trade mark in the EU for restaurant services. McDonald's opposed the application, arguing that Supermac's mark was too similar to its earlier Big Mac registration and would cause confusion among consumers.
Supermac's defended the opposition and applied for a revocation of McDonald's Big Mac registration, claiming that the trade mark had not been put to genuine use in relation to the registered goods and services in the EU.
Under EU trade mark law, failure to demonstrate genuine use of a trade mark can lead to partial or full revocation of rights. The European Court of Justice (ECJ) now ruled that McDonald's no longer holds exclusive rights to the Big Mac trade mark in the EU for poultry products or restaurant services, as it failed to show genuine use of the trade mark for these categories over a continuous five-year period.
As a result, McDonald's protection of the Big Mac trade mark is now essentially limited to meat sandwiches and foods prepared from meat.
While the partial loss of rights does not prevent McDonald's from continuing to use the Big Mac name, it opens the door for competitors to freely use the term "Mac" in connection with chicken products or even in their restaurant names within the EU. This ruling allows competitors like Supermac's to enter the market under similar names without fear of infringement claims from McDonald's, potentially diluting the distinctiveness of the Big Mac brand and reducing its value.
According to Supermac's founder Pat McDonagh this decision is a "David vs. Goliath" victory, demonstrating that small or medium-sized businesses can challenge large corporations if their rights are not actively used.
This case clearly highlights the importance of effective portfolio management, even within well-known corporations like McDonald's. Trade mark portfolios require ongoing, active management to maintain their value and enforceability.
The decision also underlines that a brand's reputation alone is not sufficient to prove genuine use. Instead, the use must be backed by substantial and specific evidence covering all goods or services claimed.
Ultimately, this serves as a cautionary reminder for companies to regularly audit their trade mark use and gather supporting evidence to avoid vulnerability to cancellation or revocation actions.
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