Business Irish

Monday 23 April 2018

Ban appetit... now Brussels outlaws the Supermac's snack box

Shock setback in McDonald’s battle as chain can’t use name to sell products across Europe

Supermac’s Pat McDonagh. Picture; Gerry Mooney
Supermac’s Pat McDonagh. Picture; Gerry Mooney

Gordon Deegan

Fast food minnow Supermac's has suffered a major setback in its on-going David versus Goliath brand war with rival McDonald's after an EU office ruled the Irish company cannot use its brand name to operate restaurants across Europe.

The shock decision has dealt a major blow to Supermac's international expansion plans.

The EU office that decides on trademark disputes yesterday upheld McDonald's opposition to Supermac's using its own brand across Europe to sell its famous snack-boxes and other items or to operate fast food restaurants.

However, in a split decision by the EU Office for Harmonisation in the Internal Market (OHIM), it ruled that Supermac's can still use its brand name and trade name in the EU - but not to sell meat, fish, poultry, chicken nuggets, chips, onion rings or hamburgers.

It said confusion may arise for English speakers between products offered by the two rivals.

Responding to the ruling last night, Pat McDonagh, founder and managing director of Supermac's, described it as "contradictory" and "questionable". He said he was confident that "ultimately common sense will prevail on the part of the decision makers".

Supermac’s Pat McDonagh has promoted the chain on a display in Times Square – but McDonalds has challenged use of the brand outside Ireland
Supermac’s Pat McDonagh has promoted the chain on a display in Times Square – but McDonalds has challenged use of the brand outside Ireland

"It is difficult to understand why they would allow the brand name but not allow us to sell the food we sell. We are quite surprised."

Mr McDonagh said he is now taking legal advice.

"We haven't been turned down. Maybe it is a mistake they made. We are not 100pc sure. We're delighted that Supermac's is now recognised in Europe. We will be continuing with the battle."

He plans to take Supermac's to Australia - however McDonald's is also opposing the use of the Supermac's trademark in that jurisdiction. Mr McDonagh said the Australian application will be decided upon shortly.

The Galway man travelled to the OHIM offices in Alicante in Spain last year to hand-deliver Supermac's rebuttal of McDonald's arguments.

McDonald' had sought to protect its registered trademarks - 'McDonald's', 'McFish', 'McMuffin', 'McNuggets', 'McWrap' and other McDonald's products.

In a 24-page ruling, the OHIM agreed with McDonald's that Supermac's application for a trademark is likely to cause confusion amongst the public over the two different fast food brands and their fast food products.

It found that consumers may believe that Supermac's is a new version of McDonald's 'Big Mac' and assume that the goods come from the same business and as a result may confuse the conflicting goods.

In his submission, Mr McDonagh argued that he has used the Supermac's brand in Ireland since 1978 and there has never been any confusion between the two brands here.

The OHIM stated that Mr McDonagh considered this to be sufficient to prevent the public from establishing a link between the brands.

However, it dismissed his argument as irrelevant because the rights of McDonald's trademark are earlier than Supermac's trademark application. It said it found "that there is a likelihood of confusion for the English speaking part of the public in the European Union".

A McDonald's spokeswoman said the company was pleased with the ruling. "As with all companies around the world, McDonald's defends the values of our brand."

Irish Independent

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