The dispute between McDonald’s and Irish fast-food chain Supermac’s has been running for years, and has become one of the most closely watched trade mark disputes.
In 2015, McDonald’s filed a formal complaint when Supermac’s tried to register its name as an EU trade mark. Since then, litigation and counter-litigation has been ongoing.
While in the EU Supermac’s continues to meet resistance in the courts, the UK Intellectual Property Office has now ruled that Supermac’s is free to register its name and logo in the UK.
We examine the background to the dispute, the latest UKIPO decision and the key lessons for businesses looking to protect and enforce their trade marks.
Background to the Big Mac v Supermac’s Dispute
Supermac’s was founded by Pat McDonagh in 1978 and over the years grew to become Ireland’s largest fast-food chain. Its legal battle with McDonald’s follows the below timeline:
- 2015: Supermac’s applies to register its brand name in the EU for expansion. McDonald’s files opposition.
- 2017: Supermac’s files a cancellation request against McDonald’s Big Mac trade mark, claiming it was not genuinely used across its various categories of designated goods.
- 2019-2024: Various claims and appeals are made around McDonald’s automatic trade mark rights in the EU to the “Mc” prefix, culminating in this being revoked for poultry-related goods.
- 2026: The UKIPO rules that Supermac’s is free to register its name and logo in the UK.
The case is interesting from an intellectual property perspective as it touches on several core principles of trade mark law, including:
- The protection offered by a trade mark.
- The ability to rely on unregistered rights acquired through trading, as per section 5(4)(a) of the Trade Marks Act 1994.
- The requirement to demonstrate genuine use of a registered trade mark, as per section 46 of the Trade Marks Act 1994.
- The different approaches that intellectual property offices take when addressing evidence, particularly based on the nature of consumers affected.
For businesses of all sizes, the dispute serves as a useful reminder that trade mark protection doesn’t end at the point of registration. The business needs to show a continuous genuine use of the trade mark within the categories it is allocated. Even considering this, different jurisdictions can come to separate decisions.
Lesson 1: Unregistered Rights Can Be Extremely Valuable
It is not always the case that the party with the registered trade mark will win.
Whilst the UKIPO decision ultimately concerned registered trade mark applications, the dispute illustrates how goodwill and reputation acquired through trading can become valuable business assets in their own right. Businesses should not assume that registration is the only form of protection available.
Clearly, unregistered rights remain an important aspect of UK intellectual property law. Businesses can help themselves by evidencing:
- How long a brand has been used
- Where products and services have been sold
- Any marketing activity
- Customer recognition of the brand
- Financial information such as sales and revenue
Lesson 2: Trade Marks Must Be Used Properly
A key aspect of McDonald’s v Supermac’s was “genuine use”.
A trade mark registration is not simply a defensive asset which offers protection in perpetuity. The owner must demonstrate genuine commercial use when challenged.
In the EU proceedings, McDonald’s faced challenges on a number of fronts, including arguments surrounding its wider family of “Mc” and “Mac” trade marks. It also faced a separate challenge regarding whether it had demonstrated genuine use of the Big Mac trade mark for certain goods and services. The EU courts ultimately found that sufficient evidence had not been provided for some poultry products and related services, reducing the scope of protection afforded to the registration.
Businesses should retain:
- Sales records
- Product catalogues
- Packaging examples
- Brochures
- Website screenshots
- Advertising campaigns
- Social media activity
- Invoices and purchase records
Lesson 3: Different Intellectual Property Offices Can Reach Different Conclusions
In the dispute between Supermac’s and McDonald’s, Supermac’s won in the UK where it didn’t in the EU. The dispute demonstrates that intellectual property offices may assess evidence differently depending on the territory involved, the consumers being considered and the specific legal tests being applied.
In this case, it was noted by the EUIPO that English and German-speaking consumers in particular were likely to confuse the Supermac’s brand with the “Big Mac” trade mark. It was also accepted by the board that the Big Mac name has very high awareness amongst the general population in which the trade mark was active. Supermac’s presence in one member state was deemed “inadequate”.
Business trading internationally should:
- Review trade mark portfolios regularly
- Maintain evidence of use in every key market
- Consider both registered and unregistered rights
- Ensure brand protection strategies are coordinated across territories
Explore our in-depth guide on protecting your intellectual property abroad for more information.
It may also be worth considering an IP audit to ascertain your current level of preparedness for defending appeals or taking litigative action.
Final Thoughts
The Big Mac v Supermac’s dispute is ultimately a reminder that trade mark protection is not just about registering a name.
Businesses should:
- Protect their brands early.
- Keep evidence of how their trade marks are used.
- Monitor competitors and potential conflicts.
- Consider both registered and unregistered rights.
- Take a strategic approach to trade mark protection across all jurisdictions.
Napthens’ dedicated intellectual property law team is 100% dedicated to matters related to IP. Whether you a looking to register a trade mark or require trade mark litigation support, we are here to support.
FAQs
Genuine use means that a trade mark is being used commercially in relation to the goods or services for which it is registered. Trade mark owners may be required to provide evidence such as sales records, advertising materials, invoices and product packaging to demonstrate genuine use if a registration is challenged.
Yes. In the UK and EU, a trade mark can become vulnerable to revocation if it has not been genuinely used for a continuous period of five years or more. If the owner cannot prove genuine use, some or all of the registration may be removed.
Evidence of use may include invoices, sales records, website archives, advertising campaigns, brochures, catalogues, social media content, photographs of products and packaging, and any other documents showing that the trade mark has been used in the course of trade.
Yes. Businesses can acquire rights through goodwill and reputation built up through trading activities. In the UK, these rights can sometimes form the basis of a passing off claim and may be relied upon when challenging or opposing a trade mark application.
No. Registration provides valuable legal rights, but those rights can be challenged. Trade mark owners may need to prove genuine use of their registrations and defend them against claims based on earlier rights, goodwill or alleged consumer confusion.
Adam Turley | Legal Director
Adam is a legal director and head of intellectual property (IP) in Napthens’ litigation team.
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