NY Court Tells NYPD It Can't Hide Surveillance Of Protesters Behind A Glomar Response

Supermacs Beats McDonalds To Have 'Big Mac' Trademark Cancelled In Europe

from the mac-attack dept

Thu, Jan 17th 2019 2:32pm — Timothy Geigner

You may be surprised to find that a search of our story archives involving fast-food giant McDonald's returns pretty scant posts here at Techdirt. Regardless, the company is known to be quite protective on trademark matters, often times using the trademarks it holds to swat at legitimate competition, pretending at potential public confusion that doesn't really exist. Given the size of the company's legal war chest, these bullying efforts are typically successful.

But not always. One victim of this bullying was Supermacs, an Irish fast-food chain with an appropriately Irish name. Supermacs has for years wanted to expand throughout Europe, but was largely unable to due to McDonald's claiming that its trademark registration for "Big Mac", the name of its famous sandwich, meant that any attempt by Supermacs to expand into Europe would cause public confusion. This is typically where the story would end. Instead, Supermacs went on the offensive and decided to try to get McDonald's "Big Mac" trademark cancelled entirely so that it could no longer be wielded as a bully-stick. And, much to this writer's surprise, Supermacs won.

McDonald's Corp has lost its rights to the trademark "Big Mac" in a landmark European Union (EU) case ruling in favour of Ireland-based fast-food chain Supermac's, according to a decision by European regulators.

The judgment revoked McDonald's registration of the trademark, saying the world's largest fast-food chain had not proven genuine use of it over the five years prior to the case being lodged in 2017.

Whoops. So, how did this happen? Well, in large part it appears that the legal team for McDonald's largely phoned its work in, likely not even considering that it had any chance of losing. When the trademark office requested that McDonald's prove it was using its "Big Mac" trademark actively in commerce, the company's legal team offered up some website printouts and got a few people to write testimonials.

The EUIPO said the affidavits from McDonald's needed to be supported by other types of evidence, and that the websites and other promotional materials did not provide that support. From the website printouts "it could not be concluded whether, or how, a purchase could be made or an order could be placed", the EUIPO said.

"Even if the websites provided such an option, there is no information of a single order being placed."

In many respects, this is all a little crazy. McDonald's does indeed sell Big Macs in Europe. Why it couldn't be bothered to put forth some evidence of this beyond printouts of websites is beyond me.

lol pic.twitter.com/JMy4lwleT9

— Sigh Hersh, Work in Progress (@Ugarles) January 17, 2019

Given that this again all stems from McDonald's wanting to pretend an Irish chain called Supermacs is confusing because of its Big Mac sandwich would cause confusion, even though Supermacs doesn't sell anything called a "Big Mac", makes it hard to feel all that sorry for McDonald's. Instead, it's easy to see this as a huge company tried to play bully then got lazy when called out on it, and now suddenly doesn't have its most famous trademark on the European continent.

Of course, this ruling is so crazy that at least one publication literally thought it couldn't be real and then had to retract it's report denying that McDonald's had lost the trademark:

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Filed Under: bad lawyering, big macs, eu, trademark
Companies: mcdonalds, supermac

38 Comments

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James Burkhardt (profile), 17 Jan 2019 @ 2:50pm

I think the best part is a single picture of a menu in Europe would have won this case. Assuming the modern menus still tell you what is on the menu in Europe, which given how hard it is for me to determine the current menu in the US, I can't guarantee.
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Anonymous Coward, 17 Jan 2019 @ 2:51pm

Why didn't McDonalds send in a wall menu or six from different countries in as evidence of their trademark? it wouldn't have taken that much extra work.
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Anonymous Coward, 17 Jan 2019 @ 2:54pm

"So Vincent, what do they call a Big Mac™ in Europe?"

"A Big Mac"
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Thad (profile), 17 Jan 2019 @ 3:01pm

I'm thinking some lawyers are going to need to start looking for a new line of work.

Who's going to hire the lawyer who couldn't prove that McDonald's sells Big Macs?
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Anonymous Coward, 17 Jan 2019 @ 3:12pm

Re:

Who's going to hire the lawyer who couldn't prove that McDonald's sells Big Macs?

Any American company unwilling to risk violating the Foreign Corrupt Practices Act. I think it's obvious that McDonalds' european law firm did not pay any bribes here.
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David, 17 Jan 2019 @ 3:48pm

Re: Re:

I think it's obvious that McDonalds' european law firm did not pay any bribes here.

You'll find that in the EU, bribing people is not as straightforward as "lobbying" in the U.S. You can actually piss off people enough by offering them bribes that they turn against you. Part of the reason is that there is job security and minimum wages and anti-corruption laws, so taking bribes actually endangers rather than bolsters your usually sufficient bottom line.
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Glenn, 17 Jan 2019 @ 3:52pm

You're really surprised that EU officials have ruled against a US company in favor of an EU company? (I think you must not be keeping up with what's been going on in the EU.)
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Lawrence D’Oliveiro, 17 Jan 2019 @ 4:01pm

Re: ruled against a US company
And here I thought McDonalds was an international company. So they’re still really only a US company, not a European company? So why should their trademarks apply in Europe, then?
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Christenson, 17 Jan 2019 @ 4:12pm

Re: Re: ruled against a US company
McDonald's is both a US company and an international Company.

US in the sense of origins and likely still HQ here, not to mention a little hubris dealing with the foreigners.

International in the sense that there are McDonald's restaurants all over the world since at least, say, 1985 in my personal memory.

I am not sure this ruling will have all that much effect in practice, except for Supermacs... do you really want to confuse your customers, or piss off McDonald's, who is likely to go re-register the mark immediately (if not appeal the ruling, I don't know the rules) and cause you grief when that goes through?
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wshuff (profile), 17 Jan 2019 @ 4:22pm

Re:
What about the Royale with cheese?! Tell me it's safe.
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Anonymous Coward, 17 Jan 2019 @ 4:31pm

>Part of the reason is that there is job security and minimum wages and anti-corruption laws, so taking bribes actually endangers rather than bolsters your usually sufficient bottom line.

Ah, the U.S. has anti-corruption laws; bureaucrats have amazing job security, and make such high salaries that minimum-wage laws don't apply.

But, in all times and places, so often more money just fuels the desire for ... much more money.

"I'm not greedy: I only want two things--(1) as much money as my next-door neighbor, plus (2) enough to move to a better neighborhood."

But financial corruption is not the only kind. Looking at recent EU cases, it's extremely hard not to suspect rampant chauvinism as the single driving factor in any case involving a large U.S.-based company. (And again, the U.S. may not be altogether immune: but the notorious international cases like Samsung-Apple have an alternate explanation based on the inanities of patent law applied to ideas.)
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JoeCool (profile), 17 Jan 2019 @ 4:58pm

Re:
Look at the tweet on the evidence provided. Looks like they included plenty. I'd expect this ruling to be appealed... almost certainly successfully. This reads like a first level court showing clear bias towards a home team.
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zippy, 17 Jan 2019 @ 5:05pm

Another reason why corporations should not be allowed to grow beyond the local level. The smaller they are, the less able they are to influence government and cause problems and bully others.
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Lawrence D’Oliveiro, 17 Jan 2019 @ 5:09pm

Re: piss off McDonald's
You make it sound like what McDonald’s thinks takes precedence over what a court has decided. If McDonald’s are “pissed off”, they can take it out on their own lawyers, not on the European legal system.
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David, 17 Jan 2019 @ 5:15pm

Re:

Looking at recent EU cases, it's extremely hard not to suspect rampant chauvinism as the single driving factor in any case involving a large U.S.-based company.

I thought rampant chauvinism was considered a good thing in the U.S. these days? I mean, "America first" was Trump's successful election platform and it's not like that's the only way in which he proudly represents chauvinism.

And if MacDonalds cannot be arsed to actually hand in the required evidence for making a ruling in their favor, I cannot blame a EU court to rule like it would do for anybody not following procedure because they consider themselves too high and mighty for that kind of thing.

I am skeptical that this ruling will stand but then MacDonalds will have to plead for being allowed to hand in actual evidence in the appellate hearing.
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Anonymous Coward, 17 Jan 2019 @ 6:18pm

Re:
On the other hand, Supermacs' lawyers should have the ultimate job security: they are the lawyers who proved McDonald's doesn't sell Big Macs. Imagine what else they could prove!
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David, 17 Jan 2019 @ 6:41pm

Re:

"I'm not greedy: I only want two things--(1) as much money as my next-door neighbor, plus (2) enough to move to a better neighborhood."

Trump just denied Pelosi the means to move herself to Afghanistan, a country not suffering from government shutdown.
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Thad (profile), 17 Jan 2019 @ 7:36pm

Re:
That's a fair point.

Another possibility, I suppose, is really out-of-touch judges. I don't know much about the folks responsible for EU trademarks, but I remember a bit in The Real Frank Zappa Book where he suggests UK judges aren't exactly up on what's going on in the modern world based on an experience where a judge didn't know what a record was and someone had to explain it to him.
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Silent Bob, 17 Jan 2019 @ 8:03pm

The funniest thing about that Washington Examiner retraction statement is the claim that they have editorial standards.
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Pixelation, 17 Jan 2019 @ 8:23pm

Time to trademark Big Smac!
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Mononymous Tim (profile), 17 Jan 2019 @ 8:54pm

Arrogance gets smacked down
Trademark office: Show us you sell Big Macs.
McDonald's: Don't you know who we are?!
Trademark office: Ok.. fine.

Me: lol
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Stephen T. Stone (profile), 17 Jan 2019 @ 10:42pm

Re: Re:
Someone get them on the phone with Bob Mueller, right stat now!
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firebird2110 (profile), 18 Jan 2019 @ 1:05am

EU court bias
Even within the EU some countries are more equal than others. Just look at Dyson's long legal battle over EU energy efficiency labels for vacuum cleaners. The rules allowed German manufacturers to use tests that were different to international standards so they could claim their products were far more energy efficient than they really are.
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Ninja (profile), 18 Jan 2019 @ 1:19am

Re: Re:
I foresee Flat Earthers hiring them in the near future.
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James T (profile), 18 Jan 2019 @ 2:36am

Re: Re: Re:
Meh, that's standard boiler plate commentary from Europe. It comes off as we are better than you because we care and so we don't do things illegally.

The reality is that doesn't really apply to lawyers and politicians who exist above the rest. There are tons of offshore illegal tax dodgers at this level. Often times they do things differently than the US. For the most part the stuff that's illegal in the US is illegal in the EU, and they occur in both regions by the same class of people.
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Anonymous Coward, 18 Jan 2019 @ 2:58am

Re:
That does not work, because a corporation can grow to own every business in the local area.
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ryuugami, 18 Jan 2019 @ 3:10am

Re: Re: Re: Re:

It comes off as we are better than you because we care and so we don't do things illegally.

No, you're misreading that.

We are better than you because we care and we don't legalize bribery. :)

(The entire point of lobbying is that is isn't illegal, which is what we Europeans tend to find a bit odd, especially from a self-proclaimed bastion of democracy.)
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David, 18 Jan 2019 @ 3:40am

Re: Re: Re:
So far, Mueller has not exactly been working in a vacuum. Lots of dirt where he's digging.
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Boneman69 (profile), 18 Jan 2019 @ 3:55am

New Big Mac
Now, Supermacs needs to come out with a new sandwich and call it a Big Mac. Just to rub salt in the wound. LOL.
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Anonymous Coward, 18 Jan 2019 @ 5:24am

We need to get these lawyers working for the eff
to prove that the proposed article 11 re website uploaded content , is illegal under EU laws on free speech and fair use .
I,m suprised the lawyers did not submit a video of someone buying a Big Mac, in a mcdonalds .
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Baron von Robber, 18 Jan 2019 @ 6:58am

Re: Re:
Just because you live in a shithole country doesn't mean you can export your shit.
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Anonymous Coward, 18 Jan 2019 @ 7:25am

Re:
Agreed.
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Anonymous Coward, 18 Jan 2019 @ 7:47am

Re: Re:
The text "Why it couldn't be bothered to put forth some evidence of this beyond printouts of websites is beyond me" is unfair. The Twitter link shows they submitted European sales figures for Big Macs too, and price lists and advertisements. While, in retrospect, the lawyers may wish they attached a receipt showing a completed purchase, it's ridiculous to lose a lawsuit based on this.
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Anonymous Coward, 18 Jan 2019 @ 7:53am

Re:

I think the best part is a single picture of a menu in Europe would have won this case.

In braindead Twitter style, someone posted a picture of text so I can't copy and paste (bonus: blind people get screwed). If you can view that link, you'll see they did submit menus with prices.

For me, the best part is that McDonalds's trademark bullying backfired. Had they done nothing, they'd still have the trademark. Now they're wasting money on lawyers and court filings, which will continue until they win the appeal.
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Anonymous Coward, 18 Jan 2019 @ 7:40pm

Re:

I,m suprised the lawyers did not submit a video of someone buying a Big Mac, in a mcdonalds .

They submitted multiple affidavits ("But how can we believe any of these - after all, they are submitted by people working for you?"), menus ("How do we know anyone actually saw this menu?"), packaging ("How can we know you how many of these you sold? If you sold any at all, that is!"), and website printouts ("how can we be sure you actually sold what was on your websites, and how do we know you didn't put those websites up yesterday?"). If the court thought they made all that up, I'm not sure why they wouldn't just say any video could have been staged too.

And even if they had such a video, with a signed affidavit from the person buying the Big Mac that he actually bought the Big Mac and that he was not an employee of McDonald's, the judges could simply have claimed that it was insufficient, because it only showed the mark was in use at one location at one time, instead of across Europe over a five-year period.

If the system has it in for you, it's really almost impossible to win.
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Lawrence D’Oliveiro, 18 Jan 2019 @ 8:44pm

Re: EU energy efficiency labels
A UK company complaining about (lack of) special treatment?

Well, with Brexit, they will be free to treat themselves specially all the want.
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zippy, 19 Jan 2019 @ 10:08pm

Re: Re:
Not if the ability to buy other companies is outlawed and corporate personhood revoked.
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vic, 7 Feb 2019 @ 6:43am

Re: Re:
Actually they didn't provide any sales data. They provided testimony of Mcdonalds executives that they sell BicMacs, which is not the same as sales data provided by some market research group or even internal sales documents. Supermacs could as well print some bicmac packaging, setup some website displaying bicmacs and get testimony from their executives that they, in fact, sell bigmacs. As you can see this evidence is of little value without any hard, independent data backing it up. And the wikipedia printout is just laughable.
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