Playing Silly Burgers

By Brand Heeler

Even the biggest brands need to follow the rules

Even the biggest brands need to play by the rules – and they don’t come much bigger than McDonald’s. The global burger chain has thousands of trade mark registrations worldwide and spends an eye-watering amount each year maintaining and enforcing them. But in a recent dispute with Irish burger chain Supermac, Maccas Mc’d up and lost their EU registration for ‘Big Mac’ for failing to prove that the trade mark had been used continuously over the last 5 years.

Supermac applied for an EU trade mark covering ‘Supermac’ in Class 43 (restaurant services) and McDonald’s duly opposed, citing its numerous prior registrations: ‘McDonald’s’, ‘Big Mac’, ‘McRib’, ‘McMuffin’, ‘Mc…’- well, you get the picture. And this is where Supermac got clever – they challenged McDonald’s to prove specific use of each of these trade marks, and took the extra precaution of applying to cancel ‘Big Mac’. Doubling down on a double burger, the Big Mac was now in big trouble. Any mark which isn’t used for a period of 5 years or more is vulnerable to being struck off, and once a challenger has thrown down the non-use gauntlet, the onus is on the trade mark owner to prove that it has genuinely been used.

McDonald’s duly submitted affidavits, brochures and adverts referring to Big Macs, as well as the relevant Wikipedia page. But the EU Intellectual Property Office decided this was insufficient to show that ‘Big Mac’ had been genuinely used as a trade mark in the European Union. None of the evidence was independent (originating as it did from McDonald’s itself) and none of it demonstrated any actual sales. Which isn’t to say they hadn’t ever sold any Big Macs, just that they hadn’t proved they had.

As a result, Supermac won and ‘Big Mac’ was declared invalid. Left with Egg McMuffin all over their face, McDonald’s have unsurprisingly said they will appeal. But unless they get their act together they risk losing one of their most important trade marks, leaving the door wide open to Supermac to expand into Europe. It’s also given Burger King/Hungry Jack’s the opportunity to have some fun at their rival’s expense, with Swedish outlets offering Whoppers as ‘Like a Big Mac, But Actually Big’, ‘Kind of Like a Big Mac, but Juicier and Tastier’ and ‘Big Mac-ish But Flame-Grilled of Course’. And you thought Brexit was the most pressing cross-border issue of the moment!

This article contains our thoughts and opinions on an issue of general interest and is written from the perspective of Australian and/or English law. It is not legal advice and is not provided in the context of a solicitor-client relationship. It may not even be relevant to your jurisdiction. No duty of care is assumed or accepted. Please carry out appropriate research and consult with a suitably qualified legal expert before taking any action or making any decisions.

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