McDonald’s vs. Supermac’s: McDonald’s loses exclusive rights for ‘Big Mac’ for Chicken Sandwiches in EU
Prologue:
Justice Manmohan Singh of the Delhi High Court has remarked in a judgment, “The world is a global village.” This sentiment captures the essence of our interconnected era, where globalization and interconnected markets continually redefine our world. Today, the judgments handed down in courtrooms across the globe can have far-reaching consequences and the ripples of these legal decisions extend far beyond their local jurisdictions, influencing economies and industries worldwide.
Welcome to “A View from Afar,” a series dedicated to examining international judgments and their far-reaching impacts.Through this series, we aim to bridge the gap between diverse legal systems and their global repercussions, offering you a panoramic view of the intricate interplay between law and commerce.
We will delve into landmark rulings from various corners of the world, unpacking the legal reasoning behind such decisions and scrutinizing their practical implications. Each article will provide a thorough analysis, shedding light on how these judgments affect not only the parties directly involved but also affect the regulatory frameworks, corporate strategies, and market dynamics on a global scale.
Whether it is a judgment delivered in the United States or the European Union, we will share our views on its profound impact in other jurisdictions navigating through the labyrinth of international jurisprudence.
Our journey begins with a critical examination of a recent ruling from the General Court of the European Union, based in Luxembourg, where McDonald’s lost its exclusive right to use the trademark “Big Mac” in respect of chicken sandwiches in the European Union. This case, stemming from a protracted legal battle with the Irish fast-food chain Supermac’s, highlights the challenges multinational corporations face in protecting their trademarks across different regions and product categories.
McDonald’s had registered the mark “Big Mac” in 1996 for a range of meat and poultry products as well as services rendered at its restaurants.
On the other hand, Supermac’s, commenced its operations in Galway in 1978 and has since aimed to expand across the UK and Europe. Supermac’s offers a variety of beef and chicken products, including burgers, fried chicken nuggets, and sandwiches.
The legal battle began in 2017 when Supermac’s filed a request at the European Union Intellectual Property Office (EUIPO) and sought the revocation of the mark “Big Mac”. Supermac’s contended that McDonald’s had not demonstrated genuine use of the trademark in respect of chicken sandwiches and other poultry products and was primarily using it only to sell its beef burgers.
Initially, the EUIPO’s Cancellation Division upheld Supermac’s request for revocation. However, this decision was later reversed by the EUIPO Boards of Appeal, and confirmed McDonald’s right to use the mark “Big Mac” in respect of beef as well as chicken sandwiches, which led to Supermac’s challenging the decision before the General Court.
At first instance, McDonald’s failed to provide carefully translated documents from French and German into English, the language of the proceedings. Furthermore, McDonald’s relied too heavily on printouts and screenshots from the Internet and Wikipedia articles as “proofs of use,” which the EUIPO Boards of Appeal had initially accepted.
However, the General Court conducted a severe scrutiny of the entire file and criticized the attitude and decision of the EUIPO Boards of Appeal, finding the evidence provided by McDonald’s inadequate.
On June 5, 2024, the General Court ruled against McDonald’s, concluding that the U.S. fast-food giant had failed to demonstrate any ‘genuine’ use of the mark “Big Mac” in respect of poultry products for over five years and emphasized that simply placing printouts of web images of a person offering food for drive-through facilities or mentioning videos on YouTube as evidence on record by McDonald’sfor “Grand Big Mac Chickens,” was insufficient to prove and substantiate genuine use of the trademark in connection with chicken sandwiches, poultry products, or operating restaurants and drive-through facilities.
Consequently, the Court partially annulled and altered the EUIPO’s earlier decision, and significantly narrowed McDonald’s exclusivity in respect of its trademark.
Despite, the ruling McDonald’s continues to retain the right to use the mark “Big Mac” primarily in respect of its beef sandwiches.
While McDonald’s may consider filing an appeal against this decision to the Court of Justice of the European Union, however, such an appeal can only be made on points of law.
The ruling against McDonald’s underscores the challenges multinational corporations face in maintaining trademark protections across different regions and product categories. It also serves as a wake-up call for the owners of well-known trademarksand offers several critical lessons for trademark registrants.
Lessons to be Learnt:
- Honest and Continuous Use is Essential
Trademark owners must demonstrate genuine and continuous use of their trademarks across the entire product and/or service range in respect of which the mark stands registered. The ruling in this case underscores that simply having a registered trademark is not enough; owners must actively and honestly use the same for the entire range of the goods and services specified in the registration.
- Comprehensive Documentation is Crucial
Evidence of use must be robust and comprehensive. In this case, McDonald’s advertisements and promotional materials for the “Grand Big Mac Chickens” were deemed insufficient. Trademark owners should maintain detailed records of marketing activities, sales data, and other documentation that clearly demonstrate the use of the trademark for all relevant products and services in respect of which the mark is in use.Assuming that a trademark’s well-known status provides additional protection beyond its actual use is a misconception.
- Importance of specification of goods & services in Trademark Applications
When applying for or renewing trademarks, precise specification of the description of goods and services intended to be sold or rendered under the mark is vital, as brand names are liable to be cancelled if not used for the entire range of products. Broad or vague categories can be challenged if not supported by actual use. McDonald’s broad registration covering various meat and poultry products fell short because it couldn’t substantiate any use for poultry products specifically.
- Monitor and Enforce Trademark Use Diligently
Regular audits of trademark use across all product lines and services can help ensure compliance withtheTrademark use requirements. Trademark owners should establish protocols for monitoring how their trademarks are being used within the company and in the market. This proactive approach can prevent lapses that might lead to vulnerabilities in legal disputes.
- Be Prepared for Legal Challenges
The case highlights that even globally renowned brands are held to the same scrutiny when having to evidence the genuine use of a trademark in a given territory. Trademark owners should be prepared for potential legal challenges and have a strategy in place for defending their trademarks, including ensuring they have solid evidence of use.
- Adapt to Regional Trademark Regulations
Understanding and adapting to regional trademark regulations is crucial. The European Union, for instance, has stringent requirements for proving genuine use. Trademark owners operating in multiple jurisdictions should tailor their trademark strategies to comply with the specific regulations and expectations of each region.
- Evaluate and Update Trademark Portfolios Regularly
Trademark portfolios should be regularly evaluated and updated to reflect current business activities. If a trademark is no longer in use for certain goods or services, consider narrowing the scope of the registration to avoid potential challenges. Regular updates ensure that the trademark portfolio accurately represents the company’s current product and service offerings.