October 21, 2019
In a recent decision, the European Union Intellectual Property Office (“EUIPO”) has limited the scope of a trademark held by McDonald’s Inc. (“McDonald’s”) over the prefix “Mc”.
In 2012, McDonald’s successfully registered a trademark over the “Mc” prefix for various foods, food products, non-alcoholic beverages, and restaurant services. Supermac’s, a fast food brand based in Ireland, argued that McDonald’s had not genuinely used its trademark for the continuous five year period required under EU law. To counter this argument and prove use of its mark, McDonald’s submitted twenty annexes of evidence from its various locations demonstrating that it had sold McNuggets, McChicken, McMuffin, McFlurry and Big Mac products in the EU.
While the EUIPO found that McDonald’s had genuinely used the “Mc” prefix for chicken nuggets and various sandwiches, protecting McDonald’s exclusive use of the terms McNuggets, McRib, McChicken and so on, it determined that McDonald’s had not established genuine use of the “Mc” prefix for some other goods over which it was registered. Specifically, the EUIPO concluded that McDonald’s had not proved genuine use of the mark for non-alcoholic beverages and syrups or for restaurant services, nor had it proven genuine use of the mark for foods prepared from meat and poultry products or biscuits, bread, cake, coffee and other desserts.
As a result of the EUIPO’s decision, McDonald’s no longer has an exclusive right to sell “Mc”-labelled coffee, tea, desserts, and related goods. Further, McDonald’s will not be able to prevent other restaurant services businesses from using the “Mc” prefix as it relates to goods that are not protected by the narrowed “Mc” trade-mark.
Authors: Sarah Stothart and Duncan Lurie