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20 June 2024

The Supermac vs Big Mac trade mark challenge

It was the battle of the burgers the other week as independent Irish fast food chain, Supermac’s, chalked up a sizeable trade mark victory for small and medium-sized enterprise (SME) businesses.  

A much bigger Mac (you know who) recently lost an important European Court of Justice decision regarding exclusive rights to the term ‘Big Mac’ (or similar ‘Mac’ variations) for meat and fish products, excluding beef. This created a legal opening for Supermac's to defend its right to use ‘mac’ in the naming of their meat products, including poultry too, by putting its challenge to McDonald's.   

The case highlights some very important lessons in relation to trade marks that apply to businesses of all sizes..  

Trade marks; get your classes right 

A trade mark is a ‘sign’ that ‘identifies you as the owner of your goods or services to make clear it belongs to you’. We’re surrounded by them every day and your favourite brands and products are all likely to be registered trade marks. . 

When any business applies to register a trade mark, they need to indicate which area of trade the mark will be used in. It could be goods, services or anything in between. This is known as the Nice classification system (after the city in France) and it’s adopted all around the world for consistency.  

Trade marks are territorial too, meaning that if you sell abroad, you’ll need protection abroad. For the United Kingdom you can register a new trade mark with the UK Intellectual Property Office for the European Union, the EUIPO. 

In 1996, McDonald's applied for an EU wide trade mark for the phrase ‘Big Mac’. They applied under Nice class marks 29; ‘edible sandwiches, meat sandwiches, and chicken sandwiches’, Nice class 30; ‘services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities’ and Nice Class 42, ‘preparation of carry-out foods’. A sensible range of classes for the activities McDonald’s was trading in, or intending to trade in. 

The first lesson here is that it pays to know the areas of business you want to sell your products or services and to find the correct corresponding Nice mark before filling in your application form. You can search all Nice classes by keyword to find the best match for you, here. 

Furthermore, it pays to use the mark in the classifications of choice, as we’ll see why. 

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Trade marks; use them or lose them 

Supermac’s had also chosen the correct class marks, but the crux of the recent case was over usage.  

Under UK and EU law, a registered trade mark must be demonstrably in use in the classifications it was registered within the first five years and every five years after. There’s good reason for this, as it prevents the equivalent of companies ‘squatting’ on trade marks without using them. We’ve seen how unfair that has been in relation to URLs, so this trade mark law acts as a  safeguard. 

This means a third party can file for a revocation of a trade mark for non-use, which is essentially what Supermac’s did. Their argument was based on the fact that McDonald’s had not used ‘Big Mac’ in relation to chicken sandwiches or foods prepared from poultry products, for which the mark was also registered in.  

McDonald’s tried to defend its ‘Big Mac’ mark citing its use of the mark for meat products besides beef burgers, but it wasn’t enough to persuade the judges. They failed to gather significant evidence of sales volume or length of usage. The mark hadn’t been used properly, so consequently they lost exclusive right of use. 

The initial ruling was to lose all meat products, including beef, but on appeal McDonald's was able to win back exclusive use of the mark in relation to beef products (which is what we know it’s famous for, after all). 

This opens an opportunity for Supermac’s and other food outlets to use similar ‘Mac’ like names, in other meat and fish products, so long as it doesn’t trade off the name and reputation of the ‘Big Mac’.  

The second lesson here is make sure you use your mark, otherwise it risks being challenged. 

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Trade marks; prove you’re using them 

This case emphasises another lesson for all business owners, keep good records. In the case of McDonald’s, they weren’t able to prove adequate usage. This is more significant a loss, given its size and enormous resources to fight legal battles. There’ll no doubt be important lessons learned for them, but these apply to any business. 

So, keep records of where your mark is used in marketing and advertising campaigns and where products or services might be listed. Ensure you have evidence of sales, as this can be an important figure if you need to fight for damages to reputation if someone infringes your mark, or in the case of McDonald's if you need to defend it against a revocation challenge. 

Your value is your brand 

What’s in a name?  

Everything. Many of us have grown up with the ‘Big Mac’ brand and some of us may even consume the product. That’s why trade marks are so important for any business large or small. It’s the identifying mark that distinguishes your product or service from everyone else. As this case study shows, intellectual property law is there to ensure as best a level playing field as possible. 

Your trade mark is a vital asset that you need to prove you’re the owner of.  

It doesn’t matter whether you’re a brewer, barber or in the burger business, what you’re famous for will always be your brand. Supermac's have always known this, and McDonald's have just been reminded of it. Your trade mark is the key to keeping that way. 

The British Library's Business & IP Centre runs a regular programme of intellectual property webinars and workshops that include trade marks. You can view the latest listing of upcoming events here 

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