Supermac’s is appealing the January EU Office for Harmonization in the Internal Market (OHIM) decision that ruled against the Irish fast food brand’s trademark application in Europe, according to The Irish Times. The company’s founder Pat McDonagh said that the OHIM decision doesn’t make sense: “Weare allowed register the name but aren’t allowed sell the products that Supermac’s sell. The brand has been used for over the last 35 years without a problem . . .”
Back in January, the OHIM rejected Supermac’s trademark application for a number of food and drink services, upholding a claim by fast food chain McDonald’s. The OHIM decision allowed Supermac’s trademark in Europe, but the brand lost its rights to sell some of its core products, like its snack box, curry chips, coffee, ice cream, and more.
McDonald’s had claimed that there was a “likelihood of confusion” if the Supermac’strademark was approved in Europe, citing its trademark registrations for many derivations of “Mc,” as in McFish, McToast, etc. and the two brands’ similar signage.
The OHIM acknowledged that consumers could be confused, stating: “To the extent that both marks contain the element ‘MAC’, which may be perceived as a name or a nickname, the marks are conceptually similar. Furthermore, to the extent that both marks may be perceived as containing references to great or considerable size, they are also conceptually similar in that they refer to quantitative indicators.”
In another development, Supermac’s has withdrawn its trademark application in Australia. Founder McDonagh says this move is purely tactical and a revised application will be filed in the coming months, summing up this recent move as: “We learned a lot from the European decision so we have to adjust the application accordingly.”