An unlikely warrior
Cú Chulainn, Conor McGregor, Katie Taylor … Ireland is known for its fearless warriors. Well, they can all step aside for the newest champion: Supermac’s.
Supermac’s was born in Ireland a couple of recessions ago. When the company first started trading in the late 1970s, it was small and had no formal advertising. It relied on word-of-mouth advertising to get the brand out there. Taxi drivers in Galway were the company’s best customers and advertisers, and its answer to the global advertising campaigns of the big fast-food chains like McDonalds.
Today, Supermac’s is one of the fastest growing indigenous firms in Ireland and, whilst Supermac’s marketing strategy has evolved to include social, digital and video strategies, one of the company’s key aims remains the same – ensuring that customers are aware of the company’s Irish heritage.
Supermac’s vs Big Mac – confusingly similar?
In 2016, Supermac’s applied for two EU trade marks to expand its territorial protection for its brand name and logo. McDonalds, seeking to maximise the scope of its monopoly control over “MC”/”MAC” in relation to burgers and restaurants, opposed the Supermac’s applications.
The EUIPO (then, OHIM) found that “Supermac’s” and “Big Mac” were similar and that consumers may be confused into believing that Supermac’s was somehow associated with McDonalds.
“To the extent that both marks contain the element ‘MAC’, which may be perceived as a name or a nickname, the marks are conceptually similar. Furthermore, to the extent that both marks may be perceived as containing references to great or considerable size, they are also conceptually similar in that they refer to quantitative indicators.
“Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar.”
Use it or lose it!
However, in 2017, in response to McDonalds (partially) successful opposition against the “Supermac’s” trade mark applications, Supermac’s responded by asking the EUIPO to cancel the “Big Mac” trade mark on the basis that McDonald’s had failed to make “genuine use” of the trade mark in relation to the goods and services for which it was registered.
In January 2019, the EUIPO decided the case in favour of Supermac’s and determined that the “Big Mac” trade mark (registered in relation to a range of goods and services in three categories including foods, beverages and restaurant services) should be cancelled.
“It follows from the above that the EUTM proprietor has not proven genuine use of the contested EUTM for any of the goods and services for which it is registered. As a result, the application for revocation is wholly successful and the contested EUTM must be revoked in its entirety. According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 11/04/2017.”
McDonald’s has two months to appeal the decision to the EUIPO Board of Appeals.
There are a few important take-away (pun intended) points here:
First, a trade mark can be an incredibly valuable tool in the arsenal of a small company when a larger corporation seeks to bully the smaller company out of using its brand name and logo. This is particularly true in registry proceedings, such as opposition proceedings and cancellation proceedings, because there are set formats and timetables for the proceedings and recoverable costs are capped, which makes it more difficult for the bigger party to simply outspend the smaller party.
Second, trade mark maintenance is essential. What is meant by “maintenance” varies from jurisdiction to jurisdiction but in the UK and the EU, maintenance means: (1) trade mark renewal fees must be paid every ten years; and (2) “genuine use” must be made of the within five years of registration (otherwise the trade mark becomes vulnerable to cancellation for non-use). What constitutes “genuine use” is not always clear, but what is clear is that more than token use in one EU country is required.
Finally, pick your battles carefully. There can be a temptation for trade mark owners (particularly trade mark owners with large portfolios and a large pool of funds for litigation) to oppose every application that they don’t like. However, before you initiate any opposition or infringement proceedings based on your trade mark portfolio, first ask yourself: (1) how secure are my own rights?; and (2) are there any grounds on which my own rights may be cancelled if I go looking for a fight? If, as in this case, there is a risk that your own rights may be vulnerable to challenge, consider whether the commercially sensible solution might be to not poke the bear!
Briffa are experts in all aspects of trade mark law and practice, including all contentious and non-contentious matters. If you would like some advice regarding your trade mark portfolio or dispute, or if you would just like to have a preliminary discussion about a trade mark issue, please do not hesitate to book a free consultation by contacting us on firstname.lastname@example.org or 020 7288 6003.
Written by Éamon Chawke