May 17, 2016

Big Mac or Supermac’s?

Back in 2014 Supermac’s applied to the EUIPO (previously known as OHIM) to register a European Trade Mark for Supermac’s for meats, processed foods, staple foods and the service of providing food and drinks.

McDonald’s almost immediate opposition was based on the ground of “likelihood of confusion” potentially arising from the use of the Supermac’s trademark in Europe. It was argued that the two companies had identical milk, meat that was “similar to a high degree” and similar seasonings. Also, confectionary items, hamburgers, ice-creams, condiments and coffee were virtually identical. Accordingly, the similarity of the products and of the name may cause confusion for consumers if the Irish chain opened restaurants in other European counties.  McDonald's also argued that the Irish firm using the name Supermac's in the EU would "take unfair advantage of the distinctive character and repute of" McDonald's earlier-won trademarks.

The EUIPO agreed that consumers could be confused, given that the word ‘MAC’ appears in both marks making them conceptually similar. Furthermore, to the extent that both marks may be perceived as containing references to great or considerable size, they are also conceptually similar in that they refer to quantitative indicators.

McDonald’s partial success against the largest Irish quick service restaurant group meant that Supermac’s suffered a major setback in its planned expansion given that the now EUIPO ruled that the Irish company cannot use its brand name to operate restaurants across Europe. In addition, Supermac’s has also decided to put on hold its plans of expansions in Australia.

In fact, although the ruling allows Supermac’s to still use its brand name and trade name in the EU  but not to sell meat, fish, poultry, chicken nuggets, chips, onion rings or hamburgers which effectively makes the trade mark redundant in respect of Supermac’s business and expansion plans.

As expected, Supermac’s appealed the decision on the 11th March and have now four months to file their grounds of appeal. The battle is not over…..

If you would like any advice or assistance please contact John North or Irene Trubbiani Montagnac.

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