By Jayne Durden ‑ January 31, 2019
Secured by McDonalds in 1996 as a burger or restaurant name, the ‘Big Mac’ trademark has been largely unchallenged since. However, earlier this month, Irish fast-food chain Supermac successfully obtained the rights to expand its brand in Europe - without a McDonalds comparison. The European Union Intellectual Property Office (EUIPO) cancelled McDonalds’ ‘Big Mac’ trademark in Europe after it ruled the restaurant had failed to prove its genuine use. McDonalds can appeal.
With 100 restaurants across Ireland, Supermac is a fast food outlet that hardly compares to McDonalds’ 36,899 restaurants across 119 countries.
Historically, in David vs Goliath trademark cases such as this, smaller companies would struggle to come out on top. However, the EUIPO took a clear stance on what it means to own a trademark - companies must “use it or lose it”. The EUIPO asserted McDonalds failed to show the IP office enough evidence of trademark use.
Research has shown a significant number of trademarks exist purely for the purpose of protection and are not ‘genuinely’ used. The subsequent ‘trademark clutter’ decreases the choice available for applicants and increases the cost of searching and registering new marks. With the capital to regularly invest in trademarks, larger companies can gain even more market share by reducing access to marks for smaller companies.
And trademark clutter is not only affecting the food industry. With pharmaceutical products there is a significant health risk attached to trademark clutter. If different drugs – with varying effects – have similar names, doctors or pharmacists can inadvertently prescribe the wrong drug. Medical journals have repeatedly reported instances of confusion from similar brand names with eight to 25 per cent of medication errors being attributed to name confusion.
Trademark clutter is a pressing concern for brands and the explosion in un-used cases could have a significant impact on innovation. However, the Supermac’s landmark EUIPO ruling has made it clear idle marks will no longer be allowed to block the progression of other brands. This is a message also being echoed in the United States.
In 2017, the United States Patent and Trademark Office (USPTO) began a ‘Post Registration Proof of Use Audit Program’. The programme promotes the accuracy and integrity of the trademark register by randomly selecting trademarks for review. Any unused trademarks are removed from the register.
For brands, a key strategy to alleviate today’s bloated trademark register is collaboration. If trademark owners worked together to protect shared applications for innovations, companies would no longer feel the need to register as many products as possible. Thinking strategically about the most valuable applications to trademark and renew is critical to reducing trademark clutter.