SUPERMAC\u2019S HAS WON the latest round of a long-running legal battle with McDonald\u2019s over trademarks with the UK Intellectual Property Office ruling that the Irish fast-food chain\u2019s name and logo can be registered in the UK.<\/p>\n
Supermac\u2019s founder and managing director, Pat McDonagh, said the decision represented another significant legal victory for his company in defending its identity against opposition from the US-multinational.<\/p>\n
McDonald\u2019s unsuccessfully claimed that the registration of Supermac\u2019s marks would conflict with its existing UK trademark rights including Big Mac and McCafe.<\/p>\n
The ruling is seen as an important development in allowing Supermac\u2019s to move forward on its plans to develop its brand in Britain.<\/p>\n
It was also a welcome development after a recent ruling by the European Union Intellectual Property Office (EU IPO) in June dismissed the Irish company\u2019s appeal against a decision to reject its application to have Supermac\u2019s registered as a trade mark across the EU.<\/p>\n
The UK IPO ruled that the respective Supermac\u2019s and McDonald\u2019s marks had significant visual, aural and conceptual differences which, in relation to the Mc\/MAC element, were \u201csufficient for a consumer not to directly confuse the marks\u201d.<\/p>\n
Although it acknowledged that McDonald\u2019s had a substantial reputation and extensive good will, it found that the difference between the two marks were such \u201cthat no link will be made by the average consumer.\u201d<\/p>\n
Commenting on the UK IPO\u2019s decision, Supermac\u2019s founder and managing director, Mr McDonagh, said the case was never about taking on McDonald\u2019s but about defending the identity of an Irish business.<\/p>\n
\u201cWe\u2019ve never had their scale or resources, but we\u2019ve always believed every business deserves the same protection under the law, regardless of its size,\u201d said Mr McDonagh.<\/p>\n
\u201cWe weren\u2019t trying to use anyone else\u2019s reputation. We were simply protecting our own,\u201d he added.<\/p>\n
The businessman said it was easy to understand why Supermac\u2019s legal challenges, when opposed by one of the biggest brands in the world, were seen as \u201cDavid versus Goliath\u201d cases.<\/p>\n
Mr McDonagh said the case reinforced an important principle that the law should protect businesses \u201con the strength of evidence, not on the size, influence or resources of the parties involved.\u201d<\/p>\n
The ruling follows Supermac\u2019s successful action which resulted in a Court of Justice of the EU ruling in June 2024 which delisted \u201cBig Mac\u201d as a trademarked restaurant and stopped McDonald\u2019s using the name on poultry products.<\/p>\n
However, in a separate ruling in June, the EU IPO decided that Supermac\u2019s logo was too close to its rival\u2019s \u201cBig Mac\u201d mark to allow it to be registered as an EU trademark, although it does not affect its ability to trade under its own name in the Republic.<\/p>\n
A EU IPO board of appeal rejected Supermac\u2019s claim that there was no reasonable likelihood that the public would mistake a Supermac\u2019s restaurant for a Big Mac burger.<\/p>\n
The case arose from an application in May 2016 by the Irish company to register \u201cSupermac\u2019s\u201d as an EU trademark for fast food restaurant services.<\/p>\n
In its appeal, lawyers for Supermac\u2019s claimed the parties had coexisted in Ireland for approximately 40 years, with no evidence of confusion between them.<\/p>\n
It pointed out that an adverse finding would require accepting that a consumer might attend a Supermac\u2019s restaurant expecting to purchase a Big Mac even though McDonald\u2019s had argued that it was almost universally recognised as one of its products.<\/p>\n
The company said the ruling lacked \u201clogical and legal basis.\u201d<\/p>\n
However, McDonald\u2019s had claimed that the boundaries between the food products and a restaurant name in the perception of the relevant public were \u201cblurred\u201d.<\/p>\n
In its ruling, EU IPO said the goods and services at issue were complementary and targeted the same public so had to be regarded as at least similar to a low degree.<\/p>\n
The board found that the \u201cBig Mac\u201d trademark enjoyed an enhanced degree of distinctiveness by virtue of intensive use and recognition in the EU.<\/p>\n
The board said the more distinctive the mark, the greater the risk of confusion but also the broader protection that it enjoyed.<\/p>\n
\u201cIt cannot be excluded that the contested sign (Supermac\u2019s) may be perceived by the relevant public as a sub-brand or a variant of the earlier mark for another new\/enhanced line of meat sandwiches,\u201d it observed.<\/p>\n
The board said coexistence needed to be demonstrated for the entire EU, with proof confined to Ireland deemed \u201cinadequate.\u201d<\/p>\n
Mr McDonagh expressed surprise at the EU IPO ruling but said Supermac\u2019s were considering a further appeal.<\/p>\n
However, he said the UK IPO decision was \u201cfar more significant\u201d in terms of the impact on its business.<\/p>\n","protected":false},"excerpt":{"rendered":"SUPERMAC\u2019S HAS WON the latest round of a long-running legal battle with McDonald\u2019s over trademarks with the UK…\n","protected":false},"author":2,"featured_media":586785,"comment_status":"","ping_status":"","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[5],"tags":[72,22384,61,60,100180],"class_list":["post-586784","post","type-post","status-publish","format-standard","has-post-thumbnail","category-business","tag-business","tag-fast-food","tag-ie","tag-ireland","tag-mcdonald"],"_links":{"self":[{"href":"https:\/\/www.newsbeep.com\/ie\/wp-json\/wp\/v2\/posts\/586784","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.newsbeep.com\/ie\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.newsbeep.com\/ie\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.newsbeep.com\/ie\/wp-json\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/www.newsbeep.com\/ie\/wp-json\/wp\/v2\/comments?post=586784"}],"version-history":[{"count":0,"href":"https:\/\/www.newsbeep.com\/ie\/wp-json\/wp\/v2\/posts\/586784\/revisions"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/www.newsbeep.com\/ie\/wp-json\/wp\/v2\/media\/586785"}],"wp:attachment":[{"href":"https:\/\/www.newsbeep.com\/ie\/wp-json\/wp\/v2\/media?parent=586784"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.newsbeep.com\/ie\/wp-json\/wp\/v2\/categories?post=586784"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.newsbeep.com\/ie\/wp-json\/wp\/v2\/tags?post=586784"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}