Supermac’s v McDonald’s: What Recent Trade Mark Decisions Mean for Brand Owners

Two recent trade mark decisions involving Irish fast-food chain, Supermac’s have produced strikingly different outcomes in the UK and the EU.

For brand owners, the cases underline the importance of evidence and the distinctions that can determine whether two brands can coexist.

The background

Supermac’s sought trade mark protection in the UK and EU for the word mark, SUPERMAC’S and a figurative version, for restaurant and food services.

McDonald’s opposed the UK applications, relying on its registered trade marks, McDONALD’S, McCAFE, BIG MAC and GRAND BIG MAC while in the case of the EU applications, it opposed based on its BIG MAC registration.

The dispute was considered separately by the UK Intellectual Property Office (‘UKIPO’) and the EU Intellectual Property Office (‘EUIPO’), resulting in opposite conclusions.

UKIPO – Supermac’s succeeds

In a decision issued at the end of July, the UKIPO rejected McDonald’s oppositions and allowed the Supermac’s marks to proceed to registration. While it accepted that McDONALD’S, McCAFE and BIG MAC enjoyed enhanced distinctiveness through use, that was not enough.

The UKIPO found that:

• consumers would perceive sufficient differences between SUPERMAC’S and GRAND BIG MAC, McDONALD’S, BIG MAC or McCAFE.
• the shared references to “Mc” or “MAC” were not sufficient to create confusion.
• McDonald’s failed to establish a protectable “family of marks” based on Mc/MAC.
• it was not sufficient to find a likelihood of confusion if a mark merely calls to mind another mark. This is mere association, not indirect confusion.
• there was no likelihood of confusion, unfair advantage or passing off.

As a result, McDonald’s oppositions were rejected.

EUIPO – McDonald’s succeeds

Only one month earlier, the EUIPO Board of Appeal reached the opposite conclusion in relation to the corresponding EU trade mark applications. The appeals brought by Supermac’s were dismissed and the EU applications were rejected.

The Board focused primarily on McDonald’s BIG MAC trade mark and found that:

• BIG MAC had been genuinely used and had acquired enhanced distinctiveness, for meat sandwiches, through extensive use across the EU.
• restaurant and food services were sufficiently similar to the goods for which BIG MAC is registered (i.e. meat sandwiches).
• consumers would identify a common distinctive element, namely “MAC”, in both BIG MAC and SUPERMAC’S.
• the differences created by the words “BIG” and “SUPER” were of limited significance because those elements were non-distinctive.
• the enhanced distinctiveness of BIG MAC increased the likelihood that consumers would assume a commercial connection.

The Board concluded that a likelihood of confusion could not be ruled out. In addition, it stated that it could not be excluded that SUPERMAC’S may be perceived as a sub-brand or a stylised variant of the BIG MAC brand. Accordingly, Supermac’s appeals and EU applications were rejected.

Why the different outcomes?

The contrasting results illustrate that trade mark law is often highly fact-specific.

Although both Offices recognised the strength of McDonald’s brands, they differed on key questions:

1. The significance of “MAC”

The EUIPO treated “MAC” as a distinctive element common to both signs whereas the UKIPO considered the similarities as weaker and placed greater weight on the differences between the marks as a whole.

2. Family of marks arguments

McDonald’s argued that consumers associate “Mc” and “MAC” branding with its business. The UKIPO was unconvinced, finding the evidence insufficient to establish a recognised family of marks. The EUIPO did not rely on this argument, instead focusing on the distinctive character of BIG MAC and the shared “MAC” element when assessing the likelihood of confusion.

3. Reputation and enhanced distinctiveness

Both Offices accepted that BIG MAC enjoys enhanced distinctiveness in the EU and UK. However, the EUIPO placed greater weight on this when assessing the likelihood that consumers might believe the marks were commercially connected.

Lessons for brand owners

• Fame does not guarantee victory – Even owners of some of the world’s most famous brands can lose if they cannot show that consumers are likely to be confused by the marks in issue.
• Evidence remains critical – These decisions demonstrate the importance of robust evidence showing use, advertising spend, consumer recognition and market presence.
• Trade mark outcomes can vary by jurisdiction – Businesses operating internationally should not assume that the same result will be reached in every territory even where the facts are broadly similar.
• Consider how consumers see the whole mark – Trade mark disputes are decided by how the average consumer is likely to perceive the marks as a whole, rather than by analysing individual elements in isolation.

Conclusion

The Supermac’s decisions highlight the balance between protecting famous brands and preserving room for legitimate competition.

For brand owners, the message is clear – reputation is valuable but success in trade mark disputes ultimately depends on demonstrating how consumers actually perceive the marks and whether a likelihood of confusion exists.

As both decisions remain capable of further appeal, this means that the legal battle between the parties may continue and could yet produce further guidance on the scope of protection afforded to highly distinctive and well-known brands in the UK and the EU.

For further information and support, please contact Maureen Daly at mdaly@reddycharlton.ie or your usual contact in Reddy Charlton LLP