A victory for Ireland's Supermac's over McDonald's - BIG MAC
I recently visited my local McDonald’s. I had in mind the BIG MAC for me and a couple of McFLURRY desserts for the children. On the menu, I encountered the Chicken BIG MAC for the first time. I am not an infrequent visitor to McDonald’s, as my waistline can attest. I have visited frequently enough to discern a BIG MAC from a Double WHOPPER, at rivals Burger King and other “sandwiches”. The term sandwich for burgers has always left me a little perplexed. The term is used widely in the US but in New Zealand they are simply burgers. The Internet reveals that there is considerable debate over whether a burger is a sandwich! I won’t get into this but for me, I continue to use the term burger, but I understand sandwich can be used interchangeably.
During my youth, I recall the McDonald’s advert on television and their jingle for the BIG MAC “Two all beef patties, special sauce, lettuce, cheese, pickles, onions on a sesame seed bun.”. It was always a bit of a mouthful to say and to this day I still remember the constituent parts of a BIG MAC.
As a child growing up in the 80’s I also vividly recall the 1988 film Coming to America https://www.imdb.com/video/vi2369569049/?ref_=ext_shr_lnk starring Eddie Murphy and Arsenio Hall, and the McDonald’s vs McDowell’s scene. Mr McDowell’s “misunderstanding with McDonald’s” and the infamous quote ”They got the Golden Arches, mine is the Golden Arcs. They got the Big Mac, I got the Big Mick. We both got two all-beef patties, special sauce, lettuce, cheese, pickles and onions, but their buns have sesame seeds. My buns have no seeds” still makes me laugh. It was probably of more commercial benefit to McDonald’s than other 1980’s product placement deals in films of that period. It was also perhaps the unconscious inspiration for my initial interest and later career in intellectual property.
The BIG MAC is significant globally and widely known in popular culture. It even has its own price index, published by The Economist since 1996, and which informally measures patty power parity between foreign currencies Our Big Mac index shows how burger prices differ across borders (economist.com). Some would say the BIG MAC is the world’s most famous burger and is certainly a well-known trade mark globally, as least for burgers.
Anyway, back to my chicken BIG MAC it was going to be new experience for me, I had always assumed it was a beef-based burger or sandwich, as in the jingle. According to the McDonald’s New Zealand website, the Chicken Big Mac is the “new Big Mac” and they say “it’s not here for long”. In New Zealand it is probably going to be a fleeting menu option and that might be the trade mark problem, if it is not used regularly. Most countries have continuing use requirements. You have to “use it or lose it”. In the European Union the grace period for non-use is five years, from the registration date, and in New Zealand and Australia, it is three years.
As far as the chicken BIG MAC the recent General Court case CURIA - Documents (europa.eu) in the European Union at least shows some use in France for the GRAND BIG MAC CHICKEN. But it was clearly not enough to maintain the BIG MAC trade mark registration In the European Union. This case involved Supermac’s (Holdings) Ltd “Supermac’s” Supermac’s fast food restaurants | About Supermac’s | Pat McDonagh (supermacs.ie), an Irish entity that opened in the 1970’s with restaurants throughout Ireland. It was founded by Pat McDonagh and the restaurants were named after the founder’s nickname, that he earned playing Gaelic football.
Like Mr McDowell in Coming to America, McDonalds and Supermac’s have had various skirmishes over the years, particularly as Supermac’s expanded beyond Ireland. It has been reported that Supermac’s have accused McDonald’s of “bullying” behaviour and Mr McDonagh has described the battle as a David vs Goliath battle. The fight in the EU began when Supermac’s attempted to register its name in the EU in 2014 as a European Union Trade Mark (“EUTM”) and McDonald’s opposed their EUTM, and were partially successful in doing so in 2016. Supermac’s filed two fresh EUTMs for SUPERMAC’S and SUPERMAC’s stylised in 2016 for restaurant services, which were again opposed by McDonalds in 2016 and 2017, respectively.
Not to be outdone Supermac’s in April 2017 applied to revoke McDonalds, BIG MAC EUTM registration on the basis of non-use, claiming the mark had not been put to genuine use for certain goods and services withing a continuous period of 5 years. That action was heard before the European Union Intellectual Property Office’s Cancellation Division and later appealed to the Board of Appeal. It finally made its way before the General Court on further appeal, and it was held that McDonald’s had not proved genuine use for “chicken sandwiches”, “foods prepared from poultry products” and “services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods”. The General Court was critical of McDonald’s evidence and that it failed to provide evidence of the extent of the use, in particular as regards to the volume of sales, the length of the period during which the mark was used and the frequency of use. Ultimately this resulted in a partial success for Supermac’s although, it has been widely reported as a loss for McDonald’s and resounding win for Supermac’s see McDonald's loses right to chicken Big Mac name (bbc.com). Everyone loves an underdog it would seem!
So even a large company like McDonalds can get it wrong and owners of well-known marks like BIG MAC must provide adequate evidence of their use or risk losing the registration. McDonald’s have said in response to the judgment that their rights remain unaffected and will not impact their ability to use or enforce their BIG MAC trade mark.
I am sure that there will be other, in the words of Mr McDowell, “misunderstandings” but for now McDonald’s have had a bit of “blood nose” from Supermac’s in this latest EU trade mark skirmish .
Our Big Mac index shows how burger prices differ across borders
Using patty-power parity to think about exchange rates.
