The trade mark battle between Irish fast food outlet Supermac’s and its global competitor, McDonald’s, over former’s attempt to register the Trade Mark Supermac’s throughout the European Union has attracted much media attention, particularly here in Ireland where it is being portrayed as a David vs Goliath contest and for the moment David’s slingshot has found its mark but we suspect the Goliath will soon clear his head and come out fighting again. In fact the whole saga was covered on Irish national television and the writer was asked briefly to comment on the affair. So what’s McDonald’s beef? They don’t like other people in the same line of business as its own registering trade marks containing the element “Mc” or “Mac”.

The latest is round two in the battle between the parties. The earlier joust saw McDonald’s victorious when it successfully prevented the Irish company registering the Trade Mark Supermac’s for various foodstuffs and restaurant services. The decision was based upon a finding, not that the various Mc trade marks owned by McDonald’s (e.g. McNuggets, McDonald’s, McFlurry etc.) were similar to Supermac’s but that the Trade BIG MAC was and Supermac’s attempt to register its mark was thwarted.

In the second round the Irish company refiled for its trade mark but went on the offensive and attacked the registration of BIG MAC on the grounds that the trade mark had not been used in the European Union during the past 5 years (in trade marks (and elsewhere), if you don’t use it, you can lose it). The trade mark was registered in the EU for numerous goods and services and while McDonald’s filed what it considered evidence of use, the European Union Intellectual Property Office found that the evidence was insufficient to establish use, particularly in relation to restaurant services where it could establish no proof whatsoever and the registration for BIG MAC was cancelled. As one commentator has said, McDonald’s won’t be “lovin” this. However, McDonald’s can of course appeal against the ruling which we expect it will. McDonald’s had also covered the possibility of losing the case by registering the Trade Mark BIG MAC again a couple of years ago but for technical reasons it can’t use this later filed registration to oppose SUPERMAC’s who now has the earlier EU rights.

The next step will probably be an appeal by McDonald’s which initially will be heard by the Office’s own Board of Appeal and from there are further appeals to the European Courts. I don’t believe that Supermac’s will be particularly worried about these appeals for although Goliath might prevail in the end, the publicity which little David has garnered will have been well worth the effort and he won’t be slinging his hook for a while yet.

Seconds out, round three.