Burger King Mocks McDonalds In Campaign

As far as I am informed Burger King has started teasing or taunting McDonalds by using Big Mac in the names of their Burgers. 

Even though McDonalds has had it's EUTM  ‘Bic Mac’ stripped from them, there can still be national registrations that makes retaliation a possibility for them. Such a registration is in place in Sweden for food services.

This is an important thing to know, that even though you have gone ahead and secured an EUTM getting a national registration in addition can provide you even better protection because if the EUTM falls there is still the national registration to fall back on. Many think that once they have secured the EU trademark that the holy grail is safe, so to speak, and now it has been shown that that actually isn’t the case.  And so here comes the important bit about the national registration: You can use that in a dispute resolution.  In some countries,  if it can be proven usage-based law also applies in relation to trade marks. 

Again  the usage-based  trade mark is a tricky one and I do advice to tread carefully when it comes to that. The protection is more difficult to both obtain  and maintain. 

As always you as the responsible person in the business need to figure out what your market is and then decide what your plan of action is going to be. A Danish company exporting to the EU needs to consider the possibility of an EUTM & A Danish one as well. The same goes for UK Based companies. Do you want to expand into the rest of Europe or are you content to just stay in the UK? Do you want to expand in the other direction so to speak, here by I mean the US then that is  something you need to discus with your trade mark specialist. 

In relation to the judgement of Big Mac the decision was made on January  16.th. and therefor McDonalds can still appeal the  judgement. (The is bit of the article written in 2019)

The background for this story is that Supermac’s, an Irish fast food chain, was wanting to expand from Ireland to Europe and thus trying to get themselves a European Trade Mark. McDonalds (McD) wasn’t very happy about that because they felt that the two names were too similar. Not least because the added word super would suggest that the Irish have a better product…. This can be seen as a delaying tactic from McD’s side because they realise that there are market shares to be lost. 

They, McD, take the situation very seriously and filed a 41-page complaint with the office for Harmonisation in the EU back in 2015.  One of the other arguments is that the name Supermac’s might cause confusion in the European public and unwarranted association between the two brands and their products. 

It’s important to note that McD hasn’t complained in the past 35 years that Supermacs had been trading in Ireland and that the fact that they were wanting to expand was the reason for opposition. 

It’s not just the European expansion that McD is trying to scupper, the plans to expand to Australia and the UK is also being blocked, because the owner of  Supermac’s is wanting to keep the brandname, which is understandable to say the least, because re-branding is a costly experience that nobody would want to take on unless it’s absolutely unavoidable.

All that took place back in 2015 now last year, 2019, there was an other dispute that Supermac’s has won against McD! McD has lost it’s exclusive rights to the ‘Mc’ trade mark for some of it’s food products. 

The issue is still that McD hasn’t provided the required kind of proof of use of the term in the above mentioned case. This means that the CJEU has ruled against the use of that prefix in some of the McD products that they, McD, trade marked. McD has the right to still use the ‘Mc’ on Chicken nuggets and on certain sandwich products. 

Both parties have had success and failures and both are to pay their own costs related to the case. Often times one party has to pay the other party costs of a lawsuit.

The ruling doses’t mean that McD cannot use it’s ‘Mc’-prefixed trade marks in Europe and it will continue to both use them and enforce them.  

Some people refer to McD as ‘McBully’ and with good reason. This case and the two separate rulings are a victory for small business owners meaning that even though the situation looked bleak from the outside, there were actions to take in order to fight off the big company. 

Let me just interject, here toward the end, that there was a case of a Danish guy who used the name McAllan for his hotdog stand in Silkeborg, Jutland - he did not give into McD either and he also won the case against McD. The case took 3 years and despite the success this guy has had other set backs, one being that he’s particular hotdog stand parking spot, so to speak, was revoked. One thing that he did succeed in doing was change his name legally to Mac Allan Bjerrum Pedersen. Before his name was: Allan Pedersen. He ended moving away from Denmark and no longer owns the Hotdog stand! 

I am writing this for you to be aware that yes you may be able to go up against the big company however it may not end well. No matter what you decide to do be prepared. Lawsuits take at least 3 years to resolve and there’s no way of cooperating with your opponent afterwards.