Both applications protect the following Class 43 services: “Services for providing food and drink; restaurant services; fast-food restaurant services; canteens; self-service restaurant services; takeaway services; snack-bars.”
McDonald’s opposed both UK applications in December 2021. In doing so, it relied on a number of its pre-existing UK trade marks for BIG MAC, McDONALD’S, McCAFE and Grand Big Mac. Submissions were subsequently filed by both parties and a hearing in the matter took place in June 2025.
Family of marks
McDonald’s argued that the use of both “Mc” and “MAC” word elements in its trade marks was a “key identifier” for its brands. It claimed that these trade marks constituted a family of marks. It also contended the extensive and widespread use of Mc and MAC over a period of decades in relation to a product or service “creates a strong link to McDonald’s.” Regarding specific marks within the claimed family, McDonald’s argued that BIG MAC was first used in the UK for its signature burger product in 1974 when its first UK restaurant opened. After considering the family of marks criteria from the relevant case law, the UKIPO held that the McDonald’s marks relied on cannot be considered as a family due to:
- Insufficient numbers
- The positioning of the common feature, and
- In the case of the BIG MAC and GRAND BIG MAC marks, not being consistently present in the market at the relevant date
Likelihood of confusion
In comparing the SUPERMAC’S trade marks with the McDONALD’S and McCAFE marks, the UKIPO held that the competing marks have significant visual, aural and conceptual differences. The Mc / MAC element is presented at different places within the marks which will impact how consumers recollect the marks, it held. According to the UKIPO, these differences are sufficient for a consumer not to directly confuse the marks. Also, the UKIPO did not consider it likely that consumers will indirectly confuse the marks.
In comparing the SUPERMAC’S trade marks with the BIG MAC and GRAND BIG MAC marks, the UKIPO held that the competing marks all share the same MAC ending. However, the UKIPO held that this similarity was outweighed by the differences at the beginning of the marks - namely the additional words BIG, GRAND BIG and SUPER. These were sufficient for the average consumer not to directly confuse the competing marks. Likewise, on the question of indirect confusion, if one mark was brought to mind by the others on the basis of the letters MAC, the UKIPO put this down to mere association not indirect confusion.
Unfair advantage and free riding
McDonald’s further claimed that Supermac’s would take unfair advantage due to “free riding” off the McDonald’s registrations relied on. In addition, it claimed that the SUPERMAC’S trade marks would be detrimental to the reputation and distinctive character of the McDonald’s brand. In deciding this claim, the UKIPO held that there was no doubt that McDonald’s has reputation in its McDONALD’S, McCAFE and BIG MAC marks. However, the differences between the McDONALD’S, McCAFE and the SUPERMAC’S marks were of a nature that no link would be made by the average consumer. Similarly, the differences between the goods protected by the BIG MAC UK trade mark and Supermac’s Class 43 services, and the differences between those competing marks meant that there would be no link. The UKIPO held that if consumers encountering the letters MAC within a trade mark were to bring the other mark to mind, it would be so fleeting that it would be ultimately ineffective.
Passing off
McDonald’s claims in passing off also failed. The UKIPO was satisfied that it had established goodwill in the signs McDONALD’S, McCAFE and BIG MAC. However, it did not find that the relevant public faced with the SUPERMAC’S trade marks, used for goods/services for which they have goodwill, will believe that there is a connection between the McDONALD’S trade marks and the SUPERMAC’S trade marks. The UKIPO held that the visual, aural and conceptual differences between the marks were significant. Accordingly, there was no logical progression between the competing trade marks capable of giving rise to misrepresentation.
Comment
The UKIPO decision represents a significant win for Supermac’s. However, it is likely to be appealed by McDonald’s. Therefore, this decision is unlikely to represent the end of the long-running dispute between the two competitor fast-food companies. It could be appealed to either the Appointed Person or to the High Court of England and Wales by McDonald’s. The EUIPO Board of Appeal decision on the other hand, could be appealed by either party to the General Court of the EU.
The most recent UKIPO decision serves as a reminder of the territorial nature of trade marks as assets. It also demonstrates that national IP offices do not always reach the same conclusions when presented with the same trade marks and disputes.The decision may also now offer an incentive to Supermac’s to expand its fast-food operations under the SUPERMAC’S trade marks in the UK in the short to medium term.
For more information and expert advice, contact a member of our Intellectual Property team.
