Conflict Supermac’s

What exactly is going on? Hamburger giant McDonald’s has been at odds with the Irish fast food chain Supermac’s for years. When the Irish company planned to expand into the rest of the European Union in 2014 and applied for a trademark for Supermac’s, McDonald’s objected. Using, among other things, the trademark registration of the word mark Big Mac, McDonald’s managed to block Supermac’s European trademark application.


Use Big Mac

Under the motto “the best defense is a good offense,” Supermac’s decided to take a different approach. The company initiated legal proceedings to invalidate the European trademark registration of Big Mac. Supermac’s argued that the Big Mac trademark was invalid because it hadn’t been used in recent years. In trademark law, the rule is that you must use a trademark to maintain your rights. If you don’t use the trademark for a period of 5 years, someone else can invoke the expiration of your rights.

Big Mac

Chicken sandwich

It seems like a ridiculous case because we all know that the Big Mac trademark is widely used by McDonald’s for a hamburger, right? That’s true, but the court isn’t debating that point, as both parties agree: Big Mac stands for a hamburger. However, in the European trademark registration for Big Mac, McDonald’s didn’t just list “sandwiches with meat” but also “sandwiches with chicken” and “restaurant services.”

No use

And for those products and services, McDonald’s indeed couldn’t show use of the Big Mac trademark. Logically: they use the name McChicken for their chicken sandwiches, and the restaurant isn’t called Big Mac, but McDonald’s. Therefore, on June 5, the European Court ruled that the Big Mac trademark rights had lapsed only for chicken sandwiches and restaurant services. For meat sandwiches, the trademark remains valid.

Wrong conclusions

But should we now conclude, as the media does, that everyone can now sell chicken sandwiches under the Big Mac name? No, of course not. A trademark registration protects the trademark not only against products specifically listed in the registration, but also against similar products. Do you think I’d get away with bringing health sandals to the market under the Nike brand? Despite Nike having sports shoes listed in its registration and not sandals, they are similar products, and Nike would immediately stop me. The same goes for any entrepreneur who thinks they can now call their chicken sandwich a Big Mac. Chicken sandwiches and meat sandwiches are similar products, so McDonald’s would easily stop you.


Restaurant services

Supermac’s attack on the Big Mac trademark registration wasn’t really about those chicken sandwiches that the media is making noise about. Supermac’s was concerned with the restaurant services. They want to register the name Supermac’s as the name of a fast-food restaurant in Europe. Now that the Big Mac trademark no longer covers restaurants, the chances for a successful European registration for Supermac’s have improved somewhat.

Bas Kist

Image Supermac’s: psyberartist, CC BY 2.0, via Wikimedia Commons

Bas Kist is mede-oprichter van Merkenbureau Chiever. Hij schrijft regelmatig artikelen over merken- en auteursrecht in de Volkskrant en Adformatie. Daarnaast is hij docent bij de European Institute for Brand management EURIB.