BY AURELIA MITCHELL DURANT Globalization has become a reality for the planet. The very loose and fluid definition of globalization is summed in an often-quoted quote by former Secretary-General of...
Kelsey Laugel | www.amdlawgroup.com
Contrary to popular belief, it is not always the big companies that win intellectual property lawsuits. Even with excessive amounts of money at their disposal and employees to rigorously seek out potential infringement on their behalf, the big chains of the world sometimes lose to the little guy. In fact, this is exactly what happened in a fairly recent case in which McDonald’s sued McCurry, a restaurant in Malaysia that serves Indian food, and seems to be the direction a more recent case is headed in which McDonald’s is suing Supermac’s.
Supermac’s is a fast food chain attempting to register its name in Europe in spite of McDonald’s attempts to stop the registration. Supermac’s currently operates solely in Ireland, but has received numerous requests to open in 15 cities across Europe. The trademark registration attempt goes hand in hand with Supermac’s intended expansion.
McDonald’s claims that Supermac’s name is likely to cause confusion among consumers in distinguishing the two brands. The fast food chain bases part of its objection on the similarity of Supermac’s name to McDonald’s registered trademarks for “Big Mac, Chicken McNuggets, McChicken, McFlurry, and McFish.” Specifically, the company argues that there is a visual and phonetic similarity between “Mc” and “Mac.” Similarly, McDonald’s notes in its objection that the likelihood of confusion is even stronger because both companies deal in products and services of the same kind – fast food.
Pat McDonagh, the Managing Director of Supermac’s, personally appeared before the Office for Harmonisation in the Internal Market to contest McDonald’s objection. He has explained that the origin of Supermac’s name comes from the nickname given him during his days as a football player in college. Supermac’s has peacefully coexisted with McDonald’s in Ireland for 37 years, and Mr. McDonagh does not see why an expansion into other European countries would change that.
This is not the first time McDonald’s has halted a trademark registration with an objection in the interest of protecting their “Mc” trademark. McDonald’s sued Indian restaurant McCurry in 2001 for trademark infringement for use of the prefix “Mc.” However, the court in that case ruled in favor of McCurry, specifically pointing to the major difference between hamburgers and curry. The court further ruled that McDonald’s cannot have a monopoly in the prefix “Mc,” and that other restaurants have the right to use it as long as they are distinguished from McDonald’s.
Over the past 25 years, McDonald’s has sued other threatened to sue numerous restaurants for trademark infringement, including those named “McVegan,” “McSushi,” and “McMuffin.” In 1988 McDonald’s won a lawsuit against a motel chain named “McSleep Inns” for trademark infringement, forever barring them from using “McSleep” in their name again. However, this case is old and, in light of the more recent McCurry case, may represent the old way of deciding trademark infringement cases.
Should McDonald’s succeed in its attempts to thwart the registration, Mr. McDonagh is not optimistic about Supermac’s likelihood of expansion, claiming that not being able to use its name would prevent any growth of Supermac’s outside of Ireland. Although the big fast food chain has money and resources on its side, cases like the McCurry case make it clear that this does not mean McDonald’s will automatically succeed with its objection.