EU court rules in favour of Supermac’s in ‘Big Mac’ trademark row with McDonald’s

Irish fast food chain Supermac’s has won another major victory in its long running trademark dispute with global burger giant McDonald’s, with a European Union court ruling siding with the Galway company.

In a ruling on Wednesday, the European Court of Justice (ECJ) came down on the side of Supermac’s, following a previous decision taken by the EU’s trademark authority.

In 2019 Supermac’s won a legal case to force McDonald’s to relinquish its trademark for the Big Mac in Europe, which the US giant appealed.

The case had been considered by the European Union Intellectual Property Office (EUIPO), which found McDonald’s had not proven genuine use of the contested trademark as a restaurant name.

McDonald’s had registered the trademark for Big Mac in Europe as a food and under a category for restaurant names. This meant McDonald’s could argue against Supermac’s opening fast food outlets elsewhere in the EU, on the basis it could cause confusion to customers.

The EUIPO ruling five and a half years ago was seen as a big win for the Galway-based company, in what Supermac’s founder and managing director Pat McDonagh had described at the time as a “David versus Goliath” battle.

McDonald’s appealed the decision with the EU trademark authority and won, with Supermac’s then taking the case to the ECJ.

In ruling on Wednesday, the General Court of the ECJ said McDonald’s had not proven genuine use of the trademark as a restaurant name to effectively block Supermac’s expanding into Europe, or for use when it came to selling chicken products.

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The ECJ said McDonald’s “has not proved that the contested mark has been put to genuine use” for those purposes. The EU court said it was partially amending the previous decision of the EUIPO, “thus further limiting the protection conferred on McDonald’s by the contested mark”.

The court said McDonald’s had not proven use of the Big Mac trademark when it came to chicken products or services “associated with operating restaurants”. The ruling will not impact the trademark protections afforded to the US company’s Big Mac burger products.

In a written judgment, the ECJ said McDonald’s had put forward evidence of chicken burgers it sold in France in 2015 and 2016 being advertised as “Big Mac chicken”, but the court did not view that as sufficient to uphold the trademark.

McDonald’s had registered the Big Mac trademark in the EU in 1996, with Supermac’s filing paperwork to have it revoked in 2017.

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The trademark fight originally started as Supermac’s was mulling a possible expansion into the British market, when Britain was still in the EU.

After Brexit the Irish fast food chain applied for a trademark in the UK, which McDonald’s opposed. That separate fight is currently working its way through the British patent court, with a hearing expected some time later this year.

The Irish company, which has a presence in about 120 locations on the island of Ireland, reported a profit of €28.9 million in 2022, according to financial accounts filed last year.

Reacting to the decision, McDonald’s Corporation said the court ruling “does not affect our right to use the ‘Big Mac’ trademark”. The company said “our iconic Big Mac is loved by customers all across Europe, and we’re excited to continue to proudly serve local communities, as we have done for decades.”

In a statement, Mr McDonagh said Supermac’s welcomed the decision. “This is a significant ruling that takes a common-sense approach to the use of trademarks by large multi-nationals. It represents a significant victory for small businesses throughout the world,” he said.

The Supermac’s managing director said the company had taken the case against McDonald’s to shine a light on “trademark bullying” by the US giant.

“We wholeheartedly welcome this judgement as a vindication of small businesses everywhere that stand up to powerful global entities,” he said.