Galway-based fast food chain Supermac’s has won its battle to force burger giant McDonald’s to relinquish its “big mac” trademark in Europe.

In a judgment from the European Union Intellectual Property Office (EUIPO), it was found that McDonald’s had not proven genuine use of the contested trademark as a burger or a restaurant name.

The judgment opens the door for Supermac’s to expand into the UK and Europe, the group’s managing director and founder Pat McDonagh told The Irish Times.

While the company has trademark protection for the Supermac’s name in Ireland, extension of the trademark across Europe was contested by McDonald’s, he said.

“It [the EU patent office] has revoked the name that was originally granted in 1996 to McDonald’s,” Mr McDonagh noted.

The “big mac” was registered in Europe both as a food and under a category for restaurant names. This meant that McDonald’s could call a restaurant “big mac”. As a result of that, it was able to argue that if the Supermac’s name was successfully trademarked, it could cause confusion for customers.

Not genuine use

In order to fight that ruling, Supermac’s had to formally submit a request to EUIPO to cancel use of the “big mac” trademark that McDonald’s had registered, arguing that it wasn’t being put to genuine use.

McDonald’s said the trademark is in use in a “number of member states” and that evidence showed it had been used in advertising and on the packaging of goods.

Under EU law, genuine use of a trademark exists where it is used to guarantee the identity of the origin of goods. EUIPO found that evidence submitted by McDonald’s was “insufficient” to establish genuine use of the trademark, resulting in its revocation.

The body found that McDonald’s would bear the costs for revocation.

Mr McDonagh said the trademark decision represents a victory for small businesses all over the world.

“We knew when we took on this battle that it was a David versus Goliath scenario but, just because McDonald’s has deep pockets, and we are relatively small in context, doesn’t mean we weren’t going to fight our corner,” he said.

Unintended consequence

In addition to paving the way for Supermac’s to use its brand on restaurants outside of Ireland, the ruling also had the unintended consequence of allowing Supermac’s to use the “big mac” trademark on any food for sale, if it so wishes.

In a statement on Tuesday, Supermac’s accused McDonald’s of “trademark bullying; registering brand names which are simply stored away in a war chest to use against future competitors”.

The Ballybrit restaurant chain noted McDonald’s had previously succeeded in putting a stop to its expansion plans for the UK and Europe on the basis of the similarity between the name Supermac’s and the “big mac”.

“This EUIPO judgment means that the main argument put forward by the US company is now gone,” Mr McDonagh said.

McDonald’s said it intends to appeal the decision and, in a statement, noted it continues to own “full and enforceable trademark rights for the mark ‘big mac’ throughout Europe” notwithstanding the decision.