An Irish burger chain has branded global fast food company, McDonald’s, a ‘trademark bully’ following a bitter, three-year intellectual property (IP) dispute.
County Galway-based Supermac’s, which was set up by businessman Pat McDonagh, has now won a landmark case that means they can apply to use the name across Europe. The ruling was made, despite protestations from McDonald’s who claimed they owned the trademark prefixes ‘Mc’ and ‘Mac’.
The dispute began in 2015 when lawyers representing McDonald’s attempted to stop Supermac’s registering an EU-wide trademark for their name in a bid to expand the business to the UK and rest of Europe.
McDonald’s argued that the branding of Supermac’s is too similar to its own and would cause confusion amongst its customers.
Then in April 2017 Supermac’s, which own over 100 outlets across Ireland, submitted a request to the European Union Intellectual Property Office (EUIPO) asking them to cancel two trademarks owned by McDonald’s.
The Irish chain accused McDonald’s of ‘trademark bullying’ and registering brand names ‘which are stored away in a war chest to use against future competitors’.
McDonald’s legal team provided a range of evidence for the EUIPO including website printouts, advertisements and signed affidavits from executives to support their claim that they deserve the trademarks. Despite this, in a landmark decision, EUIPO ruled the evidence insufficient to establish genuine use of the trademark.
The EUIPO statement said: “Taking into account the submitted evidence as a whole, it is concluded that the documents do not provide conclusive information that the products marked with the EU trademark are offered for actual sale, as there is no confirmation of any commercial transactions, either online or via brick-and-mortar operations.
Supermac’s Managing Director Pat McDonagh said in a statement: “We wholeheartedly welcome this judgment as a vindication of small businesses everywhere that stand up to powerful global entities.
“This now opens the door for the decision to be made by the European trademark office to allow us to use our ‘SuperMac’ as a burger across Europe.”
Luke Morgan, a Partner with Palmers who specialised in IP law, said: “In general terms, trademark infringement relates to the unauthorised use of a trademark or service mark in connection with goods or services.
“The crucial legal test is whether it is done in a manner that is likely to cause confusion, deception, or mistake amongst customers or consumers.
“There is also a ‘use it or lose it’ principle at work here, which means that unless the IP holder can provide sufficient evidence of recent use within the past five years, the EUIPO can revoke trademark rights.
“In this particular case, the EUIPO ruling found that various trademarked names registered by McDonalds were not being actively used commercially. This now paves the way for Supermac’s to register their own product names with the European trademark office.”
This is not the first time that a corporate giant has taken a smaller independent retailer to task over alleged IP infringements. Nando’s, U.S. retailer Macy’s and supermarket chain Sainsbury’s have all been involved in ‘David and Goliath’ IP battles against smaller businesses who allegedly broke trademark laws.
Luke added: “Trademark infringement can be both confusing and complex so it’s worth taking advice from a specialist IP solicitor before going to the time and expense of creating a new brand name or logo.”
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