Wednesday 24 July 2019

Global approval on the menu for Supermac's fight over the 'Big Mac'

Taste of home: Founder Pat McDonagh in the O’Connell St branch of Supermacs. Photo: Gerry Mooney
Taste of home: Founder Pat McDonagh in the O’Connell St branch of Supermacs. Photo: Gerry Mooney
Fiona Dillon

Fiona Dillon

Supermac's founder Pat McDonagh has revealed the company has been contacted by people from as far afield as Asia and Africa who are interested in becoming franchisees after the epic trademark win against McDonald's.

The Galway-based company took on the US giant over the 'Big Mac' trademark and won, in a case has that has attracted global attention.

Nearly 1,000 articles have been written in 52 countries with a reach of 530 million people, after it emerged that the EU Intellectual Property Office (EUIPO) made a ruling which gave a landmark legal victory to Supermac's on Tuesday.

McDonald's had been objecting to Supermac's using its own branding across Europe, specifically the 'Mac' part, on the basis of the similarity between the names.

However, this was a position the Irish company did not agree with.

"In their (McDonald's) submissions, they said that there could have been confusion either in the decor or the products of the restaurants. We couldn't see that there could have been confusion in that," Mr McDonagh said.

With their battle now behind them - although McDonald's is appealing - he said they have now received requests from people who would like to become franchisees in "at least 10 different countries, from the US, the UK, Asia, Africa, Australia and mainland Europe, all in the last 24 hours".

It's been a four-year battle to get to this point and the costs of it would run "certainly well into six-figure sums anyway", said the Supermac's founder.

"That is for the most part on legal fees and gathering information and a lot of our own time has gone into it as well," said Mr McDonagh, who got the nickname Supermac as a teenager.

Next up, it will look at its plans for expanding.

"The European office now has the opportunity to decide on granting us the Supermac trademark for a food service, so we can operate in the food service business basically.

"The lines have been drawn now and it's only a matter of decision. I know they were anxious to get this case decided on first, and I would hope it wouldn't take long.

"We have to get the trademark over the line first and then we can move from there."

The issue of expanding into Australia had been put on hold while the company concentrated on the trademark issue, but now it has succeeded, it can look again at its expansion plans.

The story has been covered all over the world including in the US, Canada, Australia and Malaysia.

Mr McDonagh said the brand has got "more recognition in the last 24 hours than for the last 20 years probably" in some of these countries.

"It has reached proportions of media coverage way beyond what I would have even considered, because we didn't do it for that reason, but I think it's because it is such a unique story."

He said he thought this was down to a number of factors.

"It is the David versus Goliath scenario where it's the big brand versus the smaller guy. Normally I suppose the support goes for the small operator at the end of the day."

The businessman said that the EUIPO "put considerable time and effort into deciding this. And what it means for general business is that larger companies can't hold trademarks and not use them," Mr McDonagh said.

"In other words, what they stated in that judgment is, if you are not using a trademark name, then you lose it."

Mr McDonagh said that this ruling would have benefits for smaller companies, because it "gives them an opportunity to use their name". Most people starting a business don't think of a trademark until they are up and running, he added.

Part of the ruling from EUIPO stated that the US multinational had not proven genuine use of the contested trademark Big Mac as a restaurant name.

"We are disappointed in the EUIPO's decision, and believe this decision did not take into account the substantial evidence submitted by McDonald's proving use of our Big Mac mark throughout Europe. We intend to appeal the decision and are confident it will be overturned by the EUIPO board of appeals," a McDonald's spokesperson said.

Meanwhile, in relation to the "iconic" McDonald's Big Mac burger, it said: "We have a range of intellectual property protection across the brand at an EU and national level and this remains unaffected by the recent EUIPO decision."

Irish Independent

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