McDonald’s recently won favour with the EU Office in a case of opposition which it filed against Supermac’s trademark application in the European Union, to prevent Supermac from registering its brandname as a trade mark in EU. Supermac had planned a major expansion in the UK, the EU and Australia.
Supermac is an Irish origin fast food company started by Pat McDonagh, in 1978. The Mighty Mac double burger and the Chicken Snack Box has been popularised since then with revenues now worth of around €100 million.
McDonald’s contended in its opposition application that if Supermac’s application was allowed for registration, it would create confusion with the general public. In its objection, McDonald’s argued that there is visual similarity between the two trademarks as they share the phonetically, visually and conceptually identical element of ‘Mc/Mac’ and the ’s’ is common to both.
In the decision of the EU office, the office upheld the opposition filed by McDonald against Supermac and restricted Supermac from using the trademark and brand name for its fast food services. However, according to the order, Supermac can use its brand name for other products in EU.
McDonald had filled the opposition in order to safeguard its already registered trademarks- ‘Big Mac’, ‘Chicken McNuggets’, ‘McMuffin’, ‘McFlurry’ and ‘McFish’.
OHIM did not uphold Supermac’s argument that the brand is being used in Ireland since 1978 and there has never been any confusion between the two brands – McDonald and Supermac.
However, the OHIM dismissed Mr. McDonagh’s argument as irrelevant because McDonald’s trade mark were registered much earlier than Supermac’s trade-mark application. In its ruling, the OHIM stated that it found “that there is a likelihood of confusion for the English speaking part of the public in the European Union”.
Though Supermac has some hope as it can still appeal against the order passed by the OHIM within a period of 4 months from the date of order. After the order has been passed by the Appellate body, we will know whether the supremacy/monopoly of McDonlad’s trademark and brand name would continue in the European Union or not.
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Authored by Sambhabi Patnaik