Supermacs has withdrawn its application to register its brand in Australia in the latest twist in its brand war with fast food giant McDonalds.
At the same time, the Galway-based fast food firm has given formal notice that it is to appeal the European ruling that it is not allowed sell its famous snack box, curry chips and other food products under its Supermacs brand across Europe.
The EU Office for Harmonisation in the Internal Market (OHIM) upheld the arguments by McDonalds in January that the use of the Supermac's brand when selling fast food would create confusion amongst the public across the EU outside Ireland between the firm's fast food products.
In opposing the Supermacs application, McDonalds was seeking to protect its registered trade-marks around ‘McDonalds’, ‘McFish’, ‘McMuffin’, ‘McNuggets’, ‘McWrap’ and other McDonald products.
However, Supermacs boss, Pat McDonagh confirmed this week that the withdrawal of the Australian tradmark application is purely tactical and that a fresh revised application will be lodged in the next two months.
Supermacs lodged its Australian application in March 2014 with plans by a franchisee to open the first Supermacs at Bondi Junction in Sydney later that year.
However, that plan was stalled after McDonalds objected to the registration of the Supermacs brand with the Australian Government.
In an interview, Mr McDonagh explained the withdrawal of the Australian application: “We learned a lot from the European decision so we have to adjust the application accordingly.”
Mr McDonagh said that the trademark application would still be for the Supermacs brand in Australia but didn’t want to say anything more about how it will be different from the initial application.
He said: “I don’t want to say anymore in case we might pre-warn someone what it might be.”
Mr McDonagh said that the ordinary citizen finds the European decision “to a certain degree inexplicable”.
He said: “The decision doesn’t make sense. We are allowed register the name but aren’t allowed sell the products that Supermacs sell. The brand has been used for over the last 35 years without a problem - it doesn’t make logical sense - that would be the main ground on the appeal.”
Mr McDonagh isn’t put off by the low success rate of appeals against OHIM decision - statistics from the OIHM show that of the 2,783 rulings on appeals in 2014, the original decision by the OHIM was upheld by the General Court in 81 per cent of cases and this followed a confirmation rate of 87 per cent in 2013.
He said: “I wouldn’t see it as reducing our chances because only one in five appeals are successful. I think we have a pretty good case. We are quite optimistic that we will find a way around this.
He added: “If you believe in something strong enough, you have to fight your case. You give it everything and then at the end of the day, you can’t have any regrets that you didn’t fight the fight.”
On the continuing global trademark war with McDonalds, Mr McDonagh, referring to McDonalds global HQ, remarked: "We must be causing ruffles somewhere that Chicago are taking it so seriously."
Supermacs now has two months in which to submit its grounds of appeal against the January OHIM decision.
