EU court rules in favour of Supermac's in trademark dispute with McDonald's over 'Big Mac'

The European Court of Justice on Wednesday upheld a complaint from the Irish company around the use of the term Big Mac on poultry-based items.

Irish fast food outlet Supermac's has won a trademark case against McDonald's in Europe.

The European Court of Justice on Wednesday upheld a complaint from the Irish company around the use of the term Big Mac on poultry-based items.

The court ruled McDonald's cannot use the term on its chicken burgers.

The general court found McDonald’s "has not proved genuine use within a continuous period of five years in the European Union in connection with certain goods and services".

Supermac’s and McDonald’s have long been involved in a dispute regarding the EU trademark Big Mac. 

The trademark had been registered for McDonald’s in 1996. In 2017, Supermac’s filed an application for revocation of that mark in relation to certain goods and services, arguing the mark had "not been put to genuine use in the European Union in connection with those goods and services within a continuous period of five years".

The European Union Intellectual Property Office (EUIPO) partially upheld that application in 2019. An assessment found the chain can only trademark it in relation to its chicken nuggets and on some sandwiches.

In its judgment on Wednesday, the court partially annulled and altered the EUIPO’s decision, further limiting the protection McDonald's has to use the trademark.

"The general court holds McDonald’s has not proved the contested mark has been put to genuine use as regards the goods ‘chicken sandwiches’, the goods ‘foods prepared from poultry products’ and the ‘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 court said the evidence which was submitted by McDonald’s "does not provide any indication of the extent of use of the mark in connection with those goods, in particular as regards the volume of sales, the length of the period during which the mark was used and the frequency of use".

"Consequently, the evidence taken into account by EUIPO does not serve to prove that there has been genuine use of the contested mark in connection with those goods. 

"Furthermore, the evidence submitted by McDonald’s does not serve to prove that the contested mark has been used in connection with ‘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 carryout foods'."