The Office for Harmonization in the Internal Market (OHIM) last week published its decision in relation to the application of the well-known fast-food outlet Supermac's for a Community Trade Mark (CTM). In a split decision, OHIM ruled that Supermac's is not entitled to use its brand to sell fast-food/takeaway products or services or to use the brand as a CTM on certain foodstuffs (e.g. meat, fish, poultry, chicken, onion rings, hamburgers, nuggets or chips) in the EU. This decision comes following the filing of extensive opposition by arguably Supermacs' biggest competitor, McDonald's.

Supermac's is entitled to use its brand name generally, but the decision prohibiting the use of 'Supermac's' on restaurants, takeaways and its food products has essentially rendered the brand useless to the Irish-owned restaurant, and has forced Supermac's to re-assess its European expansion plans.

OHIM acknowledged that Supermac's long-standing existence made it unlikely the public would believe there was a link between the Supermac's and McDonald's brands. However, in assessing the signs 'BIG MAC' and 'SUPERMAC'S', it found that the signs were similar, based on a visual, aural and conceptual analysis.  Therefore, there was a likelihood of confusion for the English-speaking part of the EU public.

Article 8(1) of the Community Trade Mark Regulation provides that, upon opposition, an application for a CTM will not be registered if, because of identity or similarity with an earlier CTM and identity/similarity between the goods/services covered by the marks, there exists a likelihood of confusion on the part of the public. McDonalds' opposition was partially successful, as the goods/services were found to be partly identical, partly similar and partly dissimilar. OHIM did comment however that "consumers may legitimately believe that the contested mark, ‘SUPERMAC’S’, is a new version or brand variation of the earlier trade mark".

On the basis that the opposition was partially successful, each party bore their own costs. However, it is clear that this decision represents a victory for the brand of Ronald McDonald over 'Supermac' Pat McDonagh.