Making a “happy” meal out of classifications and genuine use of trade marks

In an ongoing trade mark dispute between Supermac’s and McDonald’s, the European General Court’s decision in Case T-58/23 of 5 June 2024 partially revoked the registration of “BIG MAC”, in relation to goods corresponding to the chicken version of their well-known burger, as well as for services connected with the operation of restaurants and drive-through facilities.

While some news outlets hailed this as a victory for Supermac’s, was it really – and was it worth it?

Supermac’s has not hidden its desire to expand its business outside of Ireland, and this trade mark dispute seems to have arisen as a proxy war (as McDonald’s has understandable concerns about the “Supermac’s” name). This was not a complete victory, as some of Supermac’s grounds of revocation were rejected as unfounded, McDonald’s has retained the mark, Supermac’s will only be able to recover a tiny proportion of its costs, and parallel proceedings in relation to the UK mark are still ongoing. Also, based on the reasoning provided by the Court, it seems the outcome could have been different if the evidence provided by McDonald’s regarding its use of BIG MAC had been more complete.

As someone who is partial to the odd BIG MAC (in either beef or chicken incarnation), I was intrigued to see how the results were arrived at. What is interesting is the acknowledgement that the trade mark classification system is an administrative tool – it does not mean you have to pick one class only for a certain type of good or service. The other part that is interesting is that no matter how well known a brand is, the Court will only be able to consider evidence submitted, so one had better get that right.


Supermac’s history began in 1978, when it opened its first restaurant, in County Galway.  It now has over 100 restaurants in Ireland (almost all in the Republic of Ireland) and is eyeing expansion in Northern Ireland and mainland UK. This seems to have brought it into conflict with McDonald’s, whose first restaurant in the UK was opened in 1974, and in the Republic of Ireland in 1977. Given the strength and extent of McDonald’s prior trade mark rights in the UK and EU, Supermac’s cannot realistically clear its path for expansion outside the Republic of Ireland. Therefore, it resorted to alternative legal tactics, presumably with a view to putting pressure on McDonald’s to accept the planned expansion and coexist with Supermac’s.      

Supermac’s originally applied to have the EU trade mark registration of BIG MAC revoked on 11 April 2017, on the basis that it had not been put to genuine use in the EU within the preceding five years in connection with the goods and services covered by the registration. 

This application succeeded before the EUIPO Cancellation Division on 11 January 2019.

McDonald’s appealed the Cancellation Division decision, and the EUIPO Board of Appeal partially annulled the decision. This left McDonald’s with a registration covering a range of goods and services, including meat and chicken sandwiches and services connected with the operation of restaurants and drive-through facilities.

The current decision arises following an appeal from Supermac’s, requesting that the Board of Appeal decision should be annulled apart from allowing “meat sandwiches” in Class 30.

Genuine use requirement

For the “genuine use” requirement to be met, the use of the relevant trade mark cannot be merely token use for the purposes of trying to maintain the registration. There is no requirement of genuine use for the whole period: it is possible to start or resume genuine use within the period and it was acknowledged that in the fast food industry it is common to have short term product availability on a recurring basis (think of all your seasonal specials).

Although the case will be considered having regard to all the relevant facts and circumstances, points which will be considered when assessing genuine use include:

  • The practices in the relevant economic sector
  • Characteristics of the market
  • Scale and frequency of use of the mark
  • Objective evidence of actual use (not merely probabilities or presumptions) 
  • Length and frequency of use.

Chicken sandwiches

The Court’s considerations focused on the use of the mark in France, and reviewed evidence of various marketing materials.

Although images of the use of “chicken” in conjunction with BIC MAC were provided, the Court decided that evidence provided was not sufficient to establish there was genuine commercial use of the mark for “chicken sandwiches”. Areas where deficiencies were identified included the duration of the relevant campaigns, duration of availability of the chicken BIG MAC, cost of the chicken BIG MAC, and sales figures of BIG MAC not broken down into beef and chicken.

As the Court found there had not been sufficient evidence of genuine use of the mark for “chicken sandwiches” in connection with BIG MAC, all issues relating to use for chicken and poultry were decided in favour of Supermac’s.


In relation to the services, McDonald’s also provided evidence to support their argument that there was genuine use. Again, this included photographs of packaging, promotional materials (brochures, websites, television commercials), survey evidence, etc.

The issue here appears to be that the Court took a different view on how the services in this class were to be interpreted and took a view on what McDonalds’ intention was when making the registration. Its view was that McDonald’s was trying to cover fast-food restaurant services, but on a literal construction, the Court believed the registered class related to support services aimed at restaurant professionals.

Irrespective of how the class is interpreted, the Court found that the evidence provided did not show evidence of the mark for the services concerned – it was evidence of genuine use in connection with the goods only.


When registering your trade mark, it is important to think through what you will supply under the mark and tailor your specification of goods and services accordingly – particularly given the risk of bad faith if there is no commercial justification for selecting certain goods and services (which was not an issue in this case).

Also think about how you would demonstrate genuine use if there were a revocation proceeding - having advertising materials, packaging and survey evidence will only get you so far – sometimes it comes down to cold hard numbers.

As to Supermac’s and McDonald’s, this fight seems destined to continue. McDonald’s may appeal, although appeals to the Court of Justice (the final level of appeal) can only be made on points of law. As noted above, Supermac’s has not secured a compelling victory in the context of the wider dispute, so we should not expect to see Supermac’s restaurants in mainland UK (or the wider EU) any time soon.  


Case T-58/23

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