Crisis in the burger kingdom: what happened to the BIG MAC brand?
McDonald's has been in the media headlines for the past few days, following a decision by the European Intellectual Property Office (EUIPO). EUIPO has revoked the European trademark BIG MAC, registered since 1996 for sandwiches and catering services. While some newspapers have chosen to treat this news in a dramatic way (Nice Matin: "..."), the European Commission has decided to take a different approach. you may (maybe) never eat Big Macs at Mac Donald's again. "), the reality is much less exciting.
The origin of the BIG MAC case
Supermac is an Irish chain of fast food restaurants, launched in 1978 by Pat McDonagh, which today has around 100 chains. The name Supermac originally came from the nickname of the founder, who was a successful footballer in the 1960s. In 2014, Pat McDonagh, who wanted to expand his business outside Ireland, filed a European trademark application for Supermac. McDonald's then opposed this application, citing his name and the names of many "Mc" products (McFlurry, McNuggets, McMuffin).
The case quickly focused on the similarity between Supermac and Big Mac. Indeed, Big Mac is the only McDonald's brand that uses Mac instead of Mc. (Remember that Mac is a common prefix in Irish and Scottish surnames. This prefix, which means "son of", is often abbreviated to Mc).
At the time, EUIPO felt that the fact that the two "Macs" followed a similar qualifier - Super and Big - could lead to confusion. In response, Supermac argued that McDonald's did not actually own the rights to the BIG MAC brand..
The revocation of the BIG MAC trademark by EUIPO
The Big Mac is a mythical burger, whether in the United States or in Europe, as Quentin Tarantino showed in his film Pulp Fiction, in which Vince (Travolta) explains to Jules (Samuel L. Jackson), the nomenclature of hamburgers in Francewhere - thanks to the metric system - a "Quarter Pounder is called a Royal With Cheese" but "a Big Mac is a Big Mac".
But this mythical character wasn't enough to save the McDonald's brand. Indeed, once registered, a trademark must be used. When his rights are contested, the proprietor must prove the genuine use of his trademark during the last five years. In the BIG MAC case, McDonald's had registered the mark in 1996 for "sandwiches" and "services provided or related to the operation and franchising of restaurants". As there are no restaurants named "Big Mac", the lapse was for restaurant services. However, the EUIPO also ruled on 11 January that the trademark was not being used for sandwiches.
This decision is quite surprising, since Big Macs can be found in every McDonald's restaurant. But the documents brought to the EUIPO by McDonald's lawyers were not sufficient to prove this usage. These documents included a Wikipedia page recounting the history of the Big Mac. The Office stated that "Wikipedia entries cannot be considered a reliable source of information. »
The revocation of the BIG MAC brand therefore appears to be a sanction for McDonald's overconfidence.
Practical consequences of the revocation of the BIG MAC trademark
Pat McDonagh welcomed EUIPO's decision. For him, it is a victory of David over Goliath. A small family business has won against a multinational corporation. In practice, this victory remains limited.
McDonald's will most likely appeal the decision, which will have a suspensive effect on the EUIPO decision. During the appeal procedure, the fast food chain should present stronger evidence. McDonald's should therefore have no difficulty in proving its use of the Big Mac brand for sandwiches. The revocation is likely to be limited to restaurant services.
Moreover, sensing a delicate outcome, McDonald's had re-branded BIG MAC in 2017 in both original classes (sandwiches and restaurants). This new deposit will not be subject to a forfeiture action until 2022..
Finally, the Brexit could complicate matters even further. If Britain leaves the European Union without a trade agreement, EUIPO will lose all competence in the country. It is possible, however, that by then the parties may decide to end the conflict with an amicable settlement.