A Big Mac is a Big Mac™ . . . Unless You Are in the EU

STEPHANIE MORAN—On January 11, 2019, the European Union Intellectual Property Office (“EUIPO”) cancelled McDonald’s trademark on the “Big Mac” in the European Union. McDonald’s has held its “Big Mac” trademark in the EU since 1998. The cancellation of McDonald’s EU trademark is a result of a 2017 lawsuit filed by Irish restaurant chain “Supermac,” that claims that McDonald’s engaged in trademark bullying—trademarking products that the company does not sell or use. This cancellation, however, only affects McDonald’s trademark in the EU and not in the US because the two are governed by different courts and have different standards for the application for and cancellation of a trademark.

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This is not the first time McDonald’s has had a legal encounter with Supermac. In 2015, McDonald’s brought a lawsuit against Supermac claiming that some of Supermac’s menu items (for example, the Mighty Mac burger) and the restaurant’s name infringed on McDonald’s “Big Mac” trademark. The EUIPO held that because both “Mc” and “Mac” followed a similar qualifier, “Super” and “Big,” there was a likelihood of confusion, thus upholding McDonald’s trademark and denying Supermac’s. As a result, Supermac was forced to put a halt on its plans to expand into Britain.

Although the EUIPO sided with McDonald’s in the 2015 dispute, it ruled in favor of Supermac in the recent 2019 decision. The EUIPO cancelled McDonald’s “Big Mac” trademark because “McDonald’s failed to prove that it sold sandwiches called Big Macs in Europe.” As evidence of its use of the “Big Mac” trademark, McDonald’s submitted three affidavits showing sales figures of Big Macs, packaging, brochures, menus, and printouts from various EU countries’ McDonald’s websites, as well as a printout from Wikipedia that provided information on and the history of the Big Mac.

In order to preserve its EU trademark McDonald’s needed to provide evidence showing genuine use of the “Big Mac” trademark. According to the EUIPO, McDonald’s failed to do so. The evidence submitted did not show genuine use because the extent of use of the trademark was not apparent. The court was unable to establish a connection between the marketing and the number of Big Macs sold. The EUIPO reasoned that while the menu listings, brochures, and website traffic showed use of the trademark, it did not establish how the marketing led to sales of the Big Mac or how a Big Mac could be purchased.

As a result of McDonald’s loss of the Big Mac trademark, fast food chains, like Burger King, have decided to poke fun at McDonald’s. Shortly after the EUIPO decision, Burger King in Sweden released a commercial displaying a menu titled “The Not Big Macs.” Listed on this menu were the “Burger Big Mac Wished It Was,” “Like a Big Mac, But Actually Big,” “Kind of Like a Big Mac, But Juicier and Tastier,” and “Anything But a Big Mac.”

While it is very likely that McDonald’s will appeal the decision of the EUIPO, this is just an example of an issue faced in the world of trademarks. If trademarks are very similar, confusion is likely to arise amongst consumers, leading consumers to believe that two different products originate from the same source. When assessing the likelihood of confusion of trademarks, the similarity or dissimilarity of the product or mark is considered, as well as the relatedness of the goods or services. Trademarks that are likely to be confused with already existing trademarks are often rejected because of the risk of confusion. Although the recent McDonald’s/Supermac dispute was over the use of the trademark and not likelihood of confusion, if McDonald’s can prove genuine use, it is likely that the appeals board will find that Big Mac and Supermac would be confused by consumers, because a Big Mac is a type of burger served at McDonald’s, a fast food restaurant, and Supermac serves burgers and other fast food. Although the Big Mac has existed since 1968, due to the similarity in the names, it would not be surprising for consumers to believe that the Big Mac burger comes from Supermac’s. However, Big Macs are one of McDonald’s most popular, bestselling menu items, behind French fries.

Due to the Big Mac’s popularity, it seems as though the EUIPO decided incorrectly. On appeal, McDonald’s is going to need to prove that Big Macs have been purchased throughout the EU over the last five years, which should be relatively easy because most people know that McDonald’s sells Big Macs. McDonald’s will need to prove that the marketing has led to sales, showing a genuine use of the Big Mac trademark. Considering McDonald’s reportedly sold 91 million Big Macs in Britain alone in 2013, it should not be difficult to prove genuine use so long as McDonald’s lawyers provide proper and relevant evidence. If McDonald’s fails to do so, however, the appeals board will uphold the decision. This is unlikely though due to the fact that McDonald’s now knows what it needs to show the court in order to show genuine use of the Big Mac trademark.

At this time, Supermac plans to further expand in Ireland and into Britain. However, because Supermac is only planning to expand into Britain and not the rest of the EU, if the EUIPO reverses and Brexit moves forward, as planned, the decision would not be binding on British trademarks, allowing Supermac to expand without infringing on McDonald’s EU trademark.