In the latest instalment of the ongoing trade mark dispute between Irish restaurant chain Supermac’s and fast-food giant McDonald’s, Supermac’s has succeeded in partially revoking an EU Trade Mark registration for “MC”.
Earlier this year, Supermac’s prevailed in its application to cancel McDonald’s EU Trade Mark for BIG MAC, as McDonald’s failed to file sufficient evidence to convince the EUIPO that it had made genuine use of the mark in relation to any of the goods and services covered by the registration.
In the latest decided proceedings, the key issue was whether use of “MC” in combination with other words constituted use of the mark as registered.
The EUIPO was satisfied that McDonald’s had used certain terms featuring “MC” in the EU. These included “McDONALD’S” and the names for a variety of food products, such as “McNUGGETS”, “McFISH”, “McFLURRY”, and “BIG MAC”.
When a mark is used in combination with other elements, the issue is whether such use alters its distinctive character. If it does, it does not constitute use of the mark as registered.
Perhaps unsurprisingly, the EUIPO held that the addition of DONALD’S did alter the distinctive character of “MC”. It noted that the term DONALD’S is not descriptive or devoid of distinctive character, and nor was it used as an independent mark.
The EUIPO also considered that the addition of “FLURRY” and the “A” in “BIG MAC”, significantly altered the distinctive character of “MC”.
In the case of McRib, McMuffin, McToast, McFish, McWrap and McNuggets, the EUIPO was satisfied that the terms were descriptive of goods covered by the mark’s specification. As a result, those terms did not alter the distinctive character of “MC” and showed use of the mark as registered.
Ultimately, the EUIPO accepted that “MC” had been used in relation to goods in Class 29 - Chicken nuggets and Class 30 - Edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, and chicken sandwiches.
The EUIPO’s decision substantially narrowed the range of goods and services covered by the “MC” mark and (subject to appeal) represents a significant, if not complete, victory for Supermac’s.
The decision also provides a useful illustration of the way the EUIPO approaches the validity of marks that have only been used in combination with other words or features – where the additional features comprise purely descriptive terms,
It remains to be seen, however, the extent to which the decision will help determine the final outcome of the dispute between McDonald’s and Supermac’s. The BIG MAC decision has already been appealed and more decisions will no doubt follow from the EUIPO.
CANCELLATION No 14 787 C (REVOCATION) - Supermac's (Holdings) Ltd v McDonald's International Property Company, Ltd.
Our thinking
Mark Hill
Top Gun: Maverick studio Paramount sued over alleged copyright breach
Charlotte Duly
Charlotte Duly writes for CITMA Review on the China Tang trade mark infringement case
Charlotte Duly writes for CITMA Review on the China Tang trade mark infringement case
Nick White
Charles Russell Speechlys advises Symphony Holdings Limited on the sale of its PONY trade mark portfolio for USD $28 million
Charles Russell Speechlys advises Symphony Holdings Limited on the sale of its PONY trade mark portfolio for USD $28 million.
Natalie Batra
Patents and Peppa Pig: What is happening to intellectual property rights in Russia?
Certain Russian individuals and businesses can now use patents, utility models and industrial designs without obtaining prior permission.
Charlotte Duly
Charlotte Duly quoted in Retail Gazette on House of Zana trademark dispute
Charlotte Duly quoted in Retail Gazette on House of Zana trademark dispute
Durra Al Ali
Durra Al Ali and Simon Heatley write about disclosure duties for Thomson Reuters Practical Law
Disclosure duties for clients and their lawyers
Mark Hill
Mark Hill quoted in The Times on the Ed Sheeran High Court copyright case win
Mark Hill quoted in The Times on the Ed Sheeran High Court copyright case win
Mark Hill
Mark Hill quoted in the Daily Mail discussing Ed Sheeran’s copyright court case win
Mark Hill quoted in the Daily Mail discussing Ed Sheeran’s copyright court case win
Mary Bagnall
Mary Bagnall quoted by CITMA Review on the importance of mental health campaigns
Having leaders involved in mental health campaigns signals support, encouragement and understanding of the importance of mental health.
Charlotte Duly
Charlotte Duly writes for CITMA Review on on her progress as a woman in the intellectual property industry
Having it all feels closer than it ever did before.
Nick White
The problem of fakes: catching the counterfeiters
Charlotte Duly
The Jamaica Observer publish comments from Charlotte Duly on Jamaica’s accession to the Madrid Protocol
After two decades of lobbying to be listed as a member of the Madrid Protocol, Jamaica has now been successful in that effort.
Charlotte Duly
Jamaica becomes a member of the Madrid System
Charlotte Duly
Charlotte Duly co-authors A User's Guide to Trade Marks and Passing Off with Hogarth Chambers
A focus on the current law relating to the protection of registered trademarks and certain related rights.
Mark Hill
Media and Entertainment - The Changing Landscape in the Middle East #2: The Digital Context
Nick White
What Lloyd v Google means for Project Red Card
Sonia Kenawy
Can machines be inventors?
Mark Hill
Mark Hill quoted by ArtNet on the copyright dispute between French-Tunisian artist eL Seed and the Tunisian pavilion at Dubai’s World Expo
The case illustrates a growing tension around the ownership of calligraphic script in the digital era.
Lara Haidar
The United Arab Emirates Joins the Madrid System
Charlotte Duly
Charlotte Duly writes for Intellectual Property Magazine on the implications of the Court of Appeal’s decision in SkyKick on both bad faith and specification drafting
Trademark law was dominated by SkyKick in 2020 and it was in the spotlight again in 2021 following a Court of Appeal judgment in July.