7th February 2019
A branding challenge toppled the golden arches when a small Irish fast food company managed to block the international McDonald’s food chain from trademarking the terms Big Mac and Mc throughout Europe.
The European Union Intellectual Property Office ruled that McDonald’s had not been able to prove genuine use of the name Big Mac as either a burger or restaurant name, and that the trademark they registered back in 1996 should be cancelled.
The judgement opens the door to expansion for Galway-based Supermac as it will be able to register its brand as a trademark in the UK and Europe. McDonald’s had used the brand name’s similarity to Big Mac as a reason to block previous expansion outside Ireland, even though the Supermac company name had been based on the founder’s nickname when the food chain was established in 1978.
Alec Brooks, Head of Company & Commercial Law at Lamb Brooks said “This was a real David and Goliath case and demonstrates how important it is to protect your brand whatever your company size. It is also a good example of why you need to look ahead and anticipate where your company may go in future. If Supermac had registered their trade mark in other jurisdictions when they started out, they would have been in a stronger position when McDonald’s came along”
The ruling in the case coincided with changes to UK trade mark law which came into force recently (14 January 2019) which saw amendments introduced to the Trade Mark Act 1994 as a result of the new EU Trade Marks Directive 2015/2436/EU
The Directive is focused on harmonising the law at national level across member states and offers brand owners new ways to fight counterfeiting and misuse of trade marks within company names, as well as introducing new procedures for registration, renewal and restoration.
Some of the key changes are:
Alec added: “The amendments to UK law are mainly straightforward and many people will have come across them as they have already been implemented into EU Trade Mark Law”.
“The one that may cause some controversy is the change to the own name defence as this is not being applied retrospectively, so we will have situations where long-standing companies continue to use a name that would fail under the new infringement provisions and we will have to see how the courts tackle this”.
For advice on copyright law or any other company or commercial legal matter, please contact Alec Brooks on 01256 844888 or email firstname.lastname@example.org.
The contents of this article are for the purposes of general awareness only. They do not purport to constitute legal or professional advice. The law may have changed since this article was published. Readers should not act on the basis of the information included and should take appropriate professional advice upon their own particular circumstances.
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