Irish burger chain Supermac's relishes trademark win over McDonald's Big Mac

McDonald's will appeal after losing some European Union trademark rights to the Big Mac name. Photo / 123RF

McDonald's said it plans to appeal after losing some European Union trademark rights to the Big Mac name after a challenge by smaller Irish rival Supermac's.

The EU's Intellectual Property Office in a Friday decision said McDonald's failed to prove "genuine use" of the trademark across the EU over a continuous five-year period. The Irish fast-food chain filed its challenge in early 2017, the same year that the Big Mac celebrated its 50th anniversary.

The EUIPO, based in Alicante, Spain, agreed with Supermac's that the evidence given by McDonald's was "insufficient to prove that the EUTM was put to genuine use." McDonald's argued that its EU right was put to extensive use in Germany, France and the U.K., and that that "is sufficient" to prove its use in the bloc.

The ruling can be appealed all the way to the EU's highest court in Luxembourg, and McDonald's plans to fight.

"We are disappointed in the EUIPO's decision and believe this decision did not take into account the substantial evidence submitted by McDonald's proving use of our BIG MAC mark throughout Europe," McDonald's said in an email.

"We intend to appeal the decision and are confident it will be overturned by the EUIPO Board of Appeals."

The case involves only one part of McDonald's large portfolio of intellectual property. The implications for the use of the name weren't immediately clear because of the American chain's large number of trademarks in Europe. Notwithstanding the decision, McDonald's said it still owns "full and enforceable trademark rights" throughout Europe.

The mark McDonald's lost was spelled in all caps, "BIG MAC." The EU authority's website shows that McDonald's has had another EU trademark for "Big Mac" since April 2018, and in June 2017 also got the EU-wide rights to use the name "Grand Big Mac."

The EU trademark for the iconic burger - with two all beef patties, special sauce, lettuce, cheese, pickles and onions on a sesame seed bun - was first registered in 1998 and renewed twice after that, without challenges.

Supermac's Managing Director Pat McDonagh said in a statement that the decision is a victory for small businesses.

"Small is no longer a disadvantage," he said. "We wholeheartedly welcome this judgment as a vindication of small businesses everywhere that stand up to powerful global entities."

Supermac's opened in 1978 in Ireland's County Galway and now has locations throughout the country.