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Supermac’s takes another bite out of the big Mc.

02 September 2019

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.

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