Supermac's Takes Another Bite Out Of The Big Mc.

Author:Mr David Fyfield
Profession:Charles Russell Speechlys

In the latest instalment of the ongoing trade mark dispute between Irish restaurant chain Supermac's and fast-food giant McDonald's, Supermac's has succeeded in partially revoking an EU Trade Mark registration for "MC".

Earlier this year, Supermac's prevailed in its application to cancel McDonald's EU Trade Mark for BIG MAC, as McDonald's failed to file sufficient evidence to convince the EUIPO that it had made genuine use of the mark in relation to any of the goods and services covered by the registration.

In the latest decided proceedings, the key issue was whether use of "MC" in combination with other words constituted use of the mark as registered.

The EUIPO was satisfied that McDonald's had used certain terms featuring "MC" in the EU. These included "McDONALD'S" and the names for a variety of food products, such as "McNUGGETS", "McFISH", "McFLURRY", and "BIG MAC".

When a mark is used in combination with other elements, the issue is whether such use alters its distinctive character. If it does, it does not constitute use of the mark as registered.

Perhaps unsurprisingly, the EUIPO held that the addition of DONALD'S did alter the distinctive character of "MC". It noted that the term DONALD'S is not descriptive or devoid of distinctive character, and nor was it used as an independent mark.

The EUIPO also considered that the addition of "FLURRY" and the "A" in "BIG MAC", significantly altered the distinctive character of "MC".

In the case of McRib, McMuffin, McToast, McFish, McWrap and McNuggets, the EUIPO was satisfied that the terms were descriptive of goods covered by the...

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