Developments in International Trademark Law

Wednesday, 24 August 2016

A recent ruling by the European Union Intellectual Property Office (“EUIPO”) serves as a robust reminder of what is acceptable in terms of brand names and the pitfalls of applying national trademarks when expanding abroad.

Overview of the Case

Supermacs (Holdings) Limited has become a national fast food business within Ireland. Its management have yearned to expand their business within Europe and as part of their expansion, Supermacs applied to the EUIPO to register a European Union Trade Mark (now a “EUTM” as of March 2016) for SUPERMACS. The company sought the EUTM over many classes including meats, processed foods and the service of providing food and drink.

McDonalds, with recorded revenues of $8.14 billion in Europe alone in 2013, immediately opposed Supermacs’ application. McDonalds lodged a comprehensive objection against Supermacs’ application to register the 'SUPERMACS' EUTM.

In a 24-page ruling, the EUIPO agreed with McDonalds that Supermacs’ application for a trade mark is likely to cause confusion amongst the public over the two different fast-food brands and their fast-food products.

As expected, Supermacs’ appealed the decision on 11 March 2016 and have four months to file their grounds of appeal.

Potential Implications of Brexit on IP

It should be noted that the option of warehousing intellectual property assets (and availing of pan-European protections) continues to apply to Ireland. If a business has a EUTM, or a need for a EUTM, then only Ireland provides certainty as to registration and enforcement of those registrations in an English speaking registration and Court system. It is possible and indeed predicted by some that the UK will be removed from protection by the EUTM system as a result of ‘Brexit’. Thousands of brand holders and other right-holders around the world who protect their rights in Europe may need a national registration in the UK, and may consider maintaining their EUTM registrations from Ireland as a natural alternative forum for EUTM registrations.

For further information, contact a member of our Technology Team.