Supermacs, the much loved and very successful Irish fast food chain, run by
Galway entrepreneur, Pat McDonagh, has lost what looks like the first of a series
of battles with US fast food giant, McDonalds in relation to its application for an
EU Community Trade Mark Application.
The EU Office for Harmonisation in the Internal Market (OHIM) partially upheld
McDonalds application to Supermacs Community Trade Mark application on the
basis that it was thought that English speaking consumers in the EU would be
confused over the two different fast food brands and their fast food products.
On a spilt decision which has surprised many intellectual property commentators,
the OHIM held that whilst Supermacs could use its brand name and trademark in
the EU, it cannot operate fast food restaurants or sell meat, fish or poultry and its
other fast food products under the brand name.
Ronan Hynes, Partner in the Litigation Dispute Resolution Department,
commented that: “It is an unsatisfactory judgment from a practitioner’s
perspective. The main difficulty with the Judgment is that on the one hand it
allows Supermacs the right to use its brand name and trademark and yet
simultaneously it denies the trademark owner the right to sell its branded
products, which surely the trademark was designed to protect. Moreover, one
would have thought that looking at the two trademarks in totality that they were
not at all confusingly similar.” Supermacs has indicated that it is likely to appeal
the decision and further trademark battles are expected in jurisdictions such as
Australia and USA in the future.
If you have any queries in relation to Trademarks or IP Law, please contact Ronan Hynes, Partner on 061-414355 or [email protected]