{"id":188,"date":"2019-03-19T02:56:52","date_gmt":"2019-03-19T02:56:52","guid":{"rendered":"http:\/\/blogs.luc.edu\/ipbytes\/?p=188"},"modified":"2024-07-16T03:42:13","modified_gmt":"2024-07-16T03:42:13","slug":"big-mac-trademark-gets-burned-in-europe","status":"publish","type":"post","link":"https:\/\/blogs.luc.edu\/ipbytes\/big-mac-trademark-gets-burned-in-europe\/","title":{"rendered":"“Big Mac” Trademark Gets Burned In Europe"},"content":{"rendered":"

\"\"Chicago-based, fast-food powerhouse McDonald\u2019s\u00a0has locations in over 100 countries<\/a>.\u00a0 Accordingly, it is difficult nowadays to find people in the world that are not familiar with the Big Mac, a McDonald\u2019s staple since 1967.\u00a0 Regardless of which language a McDonald\u2019s menu is displayed, consumers relate the word \u201cBig Mac\u201d to the burger\u2019s signature structure: two all-beef patties, \u201cspecial sauce,\u201d American cheese, lettuce, pickles, and onion, all served in a three-part sesame seed bun.<\/p>\n

<\/p>\n

McDonald\u2019s Trademarks on a Global Scale<\/em><\/strong>
\nMcDonald\u2019s trademarks are one of its most valuable assets. In 2002, the net present value of the McDonald\u2019s trademarks in the global market was estimated to be over $14 trillion<\/a>.\u00a0 Undoubtedly, the \u201cBig Mac\u201d trademark significantly contributes to that valuation as about 28 Big Macs are sold globally every second<\/a>. \u00a0Yes, you read that correctly: 28 Big Macs a second!<\/p>\n

For McDonald\u2019s, protecting its trademarks is an international issue.\u00a0 To proactively enforce and protect its trademarks, McDonald\u2019s has successfully gone after restaurants in many different countries<\/a>, including the Philippines, Cayman Islands, and South Africa\u2014regardless of their size\u2014that have used similar marks arguably confusing to consumers.\u00a0 That is, until McDonald\u2019s challenged Supermac\u2019s<\/a>, a relatively small Ireland-based fast-food chain operating since 1978, in the European Union Intellectual Property Office<\/a> (EUIPO), the regional agency that governs trademarks in the European Union (EU).<\/p>\n

McDonald\u2019s v. Supermac\u2019s<\/em><\/strong>
\nThe battle began when McDonald\u2019s challenged Supermac\u2019s application with the EUIPO to expand its trademark use outside of Ireland. \u00a0McDonald\u2019s claimed that the use of the \u201cSupermac\u2019s\u201d mark would cause consumer confusion with its \u201cBig Mac\u201d trademark in other EU countries. \u00a0Supermac\u2019s responded to the global giant by seeking to have the valuable \u201cBig Mac\u201d trademark revoked in the EU. \u00a0In other words, Supermac was trying to take away McDonald\u2019s trademark in all <\/em>EU member countries.\u00a0 In a tasty David v. Goliath matchup, the EUIPO sided with Supermac\u2019s and the legal stones it fatally hurled at McDonald\u2019s. \u00a0David, which, in this scenario, is Supermac\u2019s owner Pat McDonagh, said shortly after the landmark decision, \u201c…just because McDonald\u2019s has deep pockets and we are relatively small in context doesn\u2019t mean we weren\u2019t going to fight our corner.\u201d<\/a><\/p>\n

How was an underdog like Supermac\u2019s successful?\u00a0 The answer lies in trademark law.\u00a0 The Agreement on Trade-Related Aspects of Intellectual Property Rights<\/a> (TRIPS)\u2014an international agreement between the 164 member nations of the World Trade Organization\u2014states that \u201c[a]ny sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark.\u201d\u00a0 A company operating or selling products in multiple countries must have a trademark in each country that it seeks protection in\u2014and satisfy the specific requirements of each of those countries.\u00a0 Therefore, a United States trademark does not necessarily qualify for trademark protection in China.\u00a0 Furthering the complexities of trademark protection internationally, each country has its own unique laws concerning trademarks that apply even after a trademark is initially obtained, i.e. registered; in particular, there are different rules about enforcement, as well as how a company may potentially lose an initial trademark.<\/p>\n

McDonald\u2019s Greasy Slip-up in the EUIPO<\/em><\/strong>
\nUnder the trademark laws of the EU\u2014of which Ireland is a member (at least for now)\u2014a registered trademark can be revoked if the owner cannot prove \u201cgenuine use\u201d of the contested trademark as a service or product identifier continuously over a 5 year period, regardless of actual use.\u00a0 McDonald\u2019s argued that its extensive use of the \u201cBig Mac\u201d trademark in Germany, France, and the United Kingdom was sufficient proof to establish \u201cgenuine use\u201d throughout the EU.\u00a0 The EUIPO disagreed<\/a>.<\/p>\n

This decision of the EUIPO may seem counterintuitive to anyone who has been in the EU and seen Big Macs sold there.\u00a0 However, this is actually a good example of how key nuances in law, and especially trademark law, have important impacts.\u00a0 In this case, McDonald\u2019s failed to satisfy the evidentiary standard of genuine use on goods and service.\u00a0 Why?\u00a0 McDonald\u2019s provided some advertising brochures, a Wikipedia print out, and affidavits from some of its employees<\/a>.\u00a0 But, the McDonald\u2019s affidavits were of its own employees, and thus given less evidentiary weight\u2014at least under EU law.\u00a0 Moreover, advertisements and even the Wikipedia entry don\u2019t technically show that the trademark was used on goods that were sold. \u00a0McDonald\u2019s should have included concrete examples such as invoices to show actual purchases.<\/p>\n

The Future of Big Macs in Europe<\/em><\/strong>
\nThe euro Big Mac is not burnt to a crisp just yet.\u00a0 McDonald\u2019s is likely to appeal the EUIPO decision revoking its EU trademark all the way up to the EU\u2019s highest court<\/a> in Luxembourg.\u00a0 In the meantime, McDonald\u2019s competitors operating within the EU are free to use the \u201cBig Mac\u201d trademark without fear of legal repercussions.\u00a0 For example, shortly after the EUIPO decision, Burger King\u2019s in Sweden renamed their Whopper sandwiches \u201cLike A Big Mac, But Actually Big\u201d and \u201cKind Of Like A Big Mac But Juicier And Tastier.<\/a>\u201d\u00a0 We will have to wait and see if the Big Mac has a future in the EU or if it will go up in smoke.<\/p>\n

Image by Michael Sanko. No Rights Reserved.<\/em><\/p>\n

Michael Sanko<\/em>
\nAssociate Blogger<\/em>
\nLoyola University Chicago School of Law, <\/em>Juris Doctor Candidate 2020<\/em><\/p>\n","protected":false},"excerpt":{"rendered":"

Chicago-based, fast-food powerhouse McDonald\u2019s\u00a0has locations in over 100 countries.\u00a0 Accordingly, it is difficult nowadays to find people in the world that are not familiar with the Big Mac, a McDonald\u2019s staple since 1967.\u00a0 Regardless of which language a McDonald\u2019s menu is displayed, consumers relate the word \u201cBig Mac\u201d to the burger\u2019s signature structure: two all-beef patties, \u201cspecial sauce,\u201d American cheese, lettuce, pickles, and onion, all … Continue reading “Big Mac” Trademark Gets Burned In Europe<\/span><\/a><\/p>\n","protected":false},"author":4,"featured_media":4386,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[4,11],"tags":[138,166,184,322,326],"class_list":["post-188","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-fun-facts","category-trademarks","tag-intellectual-property","tag-law","tag-loyola-university-chicago","tag-trademarks","tag-trips-agreement"],"_links":{"self":[{"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/posts\/188","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/users\/4"}],"replies":[{"embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/comments?post=188"}],"version-history":[{"count":3,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/posts\/188\/revisions"}],"predecessor-version":[{"id":4387,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/posts\/188\/revisions\/4387"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/media\/4386"}],"wp:attachment":[{"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/media?parent=188"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/categories?post=188"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/tags?post=188"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}