On January 15, the European Union Intellectual Property Office (EUIPO) revoked McDonald’s registered trademark, “Big Mac.” The name “Big Mac” had been protected in the EU for more than 20 years under international classes 29, 30, and 42 for foods, sandwiches, and services of franchise restaurants, respectively. Trademarks, which provide legal protections for names, among other things, can be extremely valuable assets for businesses and protect consumers in their purchasing decisions. The January 15 decision will likely create some concern, if not confusion, for international businesses in how they might protect their brands in major markets. McDonald’s quickly announced that it plans to appeal the decision, which is set against a backdrop of US-EU trade negotiations and a recent increased focus on intellectual property in trade negotiations.
In its decision, EUIPO found that the evidence McDonald’s provided to prove the genuine use of the name “Big Mac” in the EU, including websites, posters, packing, and affidavits from company representatives in Germany, France, and the UK, was not sufficient. EUIPO said about the websites, “it could not be concluded whether, or how, a purchase could be made or an order could be placed.” In addition, the regulating body took issue with brochures because there had been no evidence provided as to whom the brochures were given or how they were dispersed. The administrative decision also discussed that although some evidence was provided of use, McDonald’s did not prove the extent of use of its mark.
The case to cancel the international fast food giant’s protection was brought by an Irish fast food chain, Supermac’s. Patrick McDonagh, the managing director of Supermac’s, stated that the intention of the case was to “shine a light on the use of trademark bullying.” McDonald’s had previously taken action to prevent Supermac’s from expanding in the EU because of the similarity between the names “Supermac” and “Big Mac.” Such action by McDonald’s is permissible under trademark law to protect its brand. For example, in 2016, an EU court decided that McDonald’s could prevent the registrations of marks with “Mac” or “Mc” as a prefix and in connection to food and drinks because of its notoriety. In that case, McDonald’s successfully argued that a Singaporean “MacCoffee” mark would unfairly benefit from being associated with McDonald’s. By bringing a case that argued on the basis of disuse rather than dissimilarity of the marks, Supermac’s has won a surprising first round against a globally recognized brand.
The January 15 decision, although likely to be appealed, highlights the importance of strong intellectual property protections in global markets, an issue which has enjoyed increased focus from trade negotiators in recent years, including the notorious provisions in the USMCA. Earlier this month, the US Trade Representative (USTR) published negotiating objectives for negotiations between the US and EU, including several priorities on intellectual property. In particular, the USTR plans to “advance and defend the interests of U.S. creators, innovators, businesses, farmers, and workers with respect to strong protection and effective enforcement of intellectual property rights.” Given the monetary valuation of brands, especially famous brands, this recent decision serves as a reminder of intellectual property’s “extra value” in international trade.