Bun Fight

Latin is one, as is the brain power required to complete a Sudoku puzzle. So too is the ability to play the Ukulele. Another might be a conjurer’s trick like my friend’s Magic Circle-member grandfather who, for familial amusement and entertainment, habitually levitated grandmother after a particularly good Sunday roast. You don’t get that at the local Harvester. And finally, a chicken burger, more particularly a “Big Mac” McDonald’s chicken burger. The common denominator of all of these being they are lost if not used.

You might be a tad disappointed, but this piece is all about the burger.

Have your burger and eat it

In our little corner of law, in the world of intellectual property, we are well used to courts allowing businesses or individuals to exploit a market for a reasonable period. IP law is largely about protecting the right to exploit. Arguably, it was developed with the very intention of promoting it. But there are limits and aspects of fairness to consider particularly where a business hoards or sits on a trademark without using it or offering it up for re-use. Just as we might rail at a reclusive millionaire art collector hiding away masterpieces from public gaze, the IP courts like to see a trademark used. Use it or lose it, you might say.

McDonald’s registered Big Mac as a mark in 1996. Intending to and using it to describe and promote its burgers and other foods.

The Fields of Athenry-bread

Along came a rival, Irish burger joint, called Supermac. It claimed on application to the European Union Intellectual Property Office (EUIPO) that McDonald’s had lost its right to use the term Big Mac because it had not been put to genuine use for 5 years. That period being the legal yardstick of the ‘use it or lose it’ principle.

Well, Supermac lost at first instance. Undaunted, they appealed to the European Court of Justice (ECJ). This time with some interesting evidence showing that the term Big Mac may have been used by McDonald’s but only sufficiently to meet the legal requirement of continuous use in relation to meat burgers other than chicken. The usage case had not been made out for chicken burgers, or so they claimed. The ECJ agreed. Poultry products were fair game for Supermac to use the term Big Mac in its promotions.

Supermac trumpeted its big win:

Founder Pat McDonagh reported as saying:

“This is a significant ruling that takes a common-sense approach to the use of trademarks by large multi-nationals. It represents a significant victory for small businesses throughout the world.”

He expressed his desire to:

“…shine a light on the use of trademark bullying …to stifle competition”.

Marching on its stomach

Clearly emboldened by the win, McDonagh now wishes to take his brand into Europe.

McDonald’s appeared calm and rational saying:

“The decision by the EU General Court does not affect our right to use the ‘Big Mac’ trademark,”

Hmmm…defensive ‘pinstripe’ words, but it kind of does, doesn’t it?

As Irish horns blow, what’s that some can see, is it the walls of Jericho cracking.

Murray Fairclough
Development Underwriter
OPUS Underwriting Limited  
+44 (0) 780 145 9940
underwriting@opusunderwriting.com