Many media outlets are drawing nonsensical conclusions after the ruling on the Big Mac brand. Can any burger maker use the name Big Mac, as the AD writes? Of course not, the Big Mac brand still stands strong.
Conflict with Supermac’s
What exactly is going on? Burger giant McDonald’s has been at odds with the Irish fast-food chain Supermac’s for years. When the Irish decided to expand into the rest of the European Union in 2014 and applied for a trademark registration for Supermac’s, McDonald’s objected. Based on the trademark registration of the wordmark Big Mac, McDonald’s was able to block the European application for Supermac’s brand.
Use of Big Mac
Under the motto ‘attack is the best defense,’ Supermac’s decided to take a different approach. The company initiated a legal procedure at the European Court to challenge the European trademark registration of Big Mac. Supermac’s argued that the registration of Big Mac is invalid because the brand has not been used in recent years.
In trademark law, the rule is that you must use a brand to maintain your rights. If you do not use the brand for a period of 5 years, someone else can claim the rights to it.
Chicken sandwich
It seems like an absurd case, because we all know that the Big Mac brand is widely used by McDonald’s for a hamburger. That’s true, but that’s not what this case is about since both parties agree: Big Mac simply stands for a hamburger.
However, in the European trademark registration of Big Mac, McDonald’s not only listed ‘sandwiches with meat’ but also ‘sandwiches with chicken’ and ‘restaurant services.’
No use
And for those products and services, McDonald’s cannot demonstrate the use of the Big Mac brand. Of course, for their chicken sandwiches, they use the brand name McChicken, and the restaurant is not named Big Mac but McDonald’s. That’s why the European Court ruled on June 5 that the trademark rights of Big Mac have expired, only regarding chicken sandwiches and restaurant services. The brand still stands strong for sandwiches with meat.
Incorrect conclusions
But should you now, as the media does, conclude that anyone can simply sell chicken sandwiches under the Big Mac brand? No, of course not. A trademark registration not only protects the products listed in the registration but also similar products. Would I get away with selling health sandals under the Nike brand tomorrow? Despite the fact that Nike has sports shoes in its registration and not sandals, they would stop me because they are similar products.
This also applies to the entrepreneur who thinks he can just call his chicken sandwich Big Mac. A chicken sandwich and a meat sandwich are similar products, so McDonald’s will quickly shut you down.
Restaurant services
Supermac’s attack on the Big Mac trademark registration was not about chicken sandwiches that the media is making noise about. They were focused on 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 registration no longer covers restaurants, the chances of a successful European registration for Supermac’s have improved.
Bas Kist is a co-founder of the Chiever Trademark Agency.