In March 2014 Supermac’s (Holdings) Limited, as part of their expansion plans into the European market, applied to the European Union Intellectual Property Office (EUIPO, previously known as OHIM) to register a European Union Trade Mark (previously known as a CTM) for SUPERMAC’S. They sought to register the trade mark in classes 29, 30 and 43, which broadly speaking covers meats, processed foods, staple foods and the service of providing food and drink.

The application was met with opposition from McDonald’s almost immediately. The focus of their opposition was based on a provision of the Community Trade Mark Regulation, which allows the proprietor of an earlier mark to oppose the registration of a trade mark where there is a similarity that is likely to cause confusion amongst the public. McDonald’s claimed that this confusion would arise due to the similarity of the products and the similarity between the name Supermac’s and their trade mark ‘Big Mac’.

The Opposition Division of EUIPO held that, in order to establish a risk of injury to the earlier mark, it was necessary to demonstrate that the public would establish a link between the two marks. McDonald’s were partially successful in their application, and although the trade mark was granted, it was not registered for the classes requested. Consequently, it cannot be used to sell meat, fish, poultry, chicken nuggets, chips, onion rings, hamburgers or milk shakes, effectively making the trade mark redundant in respect of Supermac’s business and expansion plans. As expected Supermac’s appealed the decision on the 11 March 2016 and have four months to file their grounds of appeal.