McTrademark Dispute

I think we’d be safe in the assumption that “Is ‘Extra’ one of those McDonald’s service stations?” isn’t a question we’d ever be expecting, especially from a ten year old on a drive back home from the inlaws’. However this is where we find ourselves. Are we supposed to know this information? Does anyone?

We’d always assumed it was and that the ‘Extra’ motorway services were McDonald’s owned motorway services (which meant a Maccies was available as part of the site offering…). The yellow and red, the golden arches rotated to look like an X you can spot from half a mile down the motorway. Surely there’s a link?

A Little Extra

Turns out Extra MSA is its own thing, set up in the 90s after the government deregulated services; they’re owned independently, with no McDonald’s parent. We haven’t found any publicly available evidence of a trade mark licence or coexistence agreement between them – although, of course, that doesn’t mean a private agreement doesn’t exist. McDonald’s is a tenant at their sites. What’s more interesting (to us lawyers, anyway) is what isn’t there. We’ve searched for oppositions, infringement actions, but nothing obvious pops up (though it looks like many others have had the same belief that the two were linked if you Google it!)

McDonald’s are famously protective brand owners, though in fairness, most of their enforcement firepower has historically gone into the “Mc-/Mac-” prefix rather than the arches themselves, which are so iconic that few would ever brave imitating them.

They Got The Big Mac, I Got The Big Mick

They’re not always successful in trying to protect from people taking the Mc.
For instance when they took a chain of Chinese restaurants called McChina to court, a high court judge ruled against them.
The judge said they’d only objected because they claimed established rights for their trade marks, and called them out for “seeking to monopolise all names and words with prefix Mc or Mac”.

In Singapore, Future Enterprises Pte Ltd applied to register MacChocolate, MacTea and MacNoodles. McDonald’s opposed the applications, but lost before the registry, the High Court and ultimately the Singapore Court of Appeal in 2004 .
This wasn’t the last time Future would push the “mac” prefix, but in 2013 the EU courts upheld a ruling Future’s MacCoffee product “…rides on the coat-tails of McDonald’s in order to benefit from its power of attraction, its reputation and its prestige, and exploits, without paying any financial compensation…”. But Future’s luck eventually ran out. In 2016, the EU General Court upheld the invalidation of its MACCOFFEE trade mark, finding that it took unfair advantage of the reputation of McDonald’s and its family of ‘Mc/Mac’ marks. So, who knows what the future (pardon the pun) holds for Future?

Meanwhile, in a pretty well publicised case, McDonald’s tried to block Supermac’s from expanding across Europe, claiming the name was too similar to, you guessed it, “Big Mac”.
Supermac’s countered by asking the European regulators to revoke McDonald’s broad trade marks due to non-use. This escalated to the point where eventually the EU General Court stripped McDonald’s of its exclusive “Big Mac” trade mark for certain products and restaurant services.

Given they have over 100 restaurants already, this could open Supermac’s up to further expand throughout Europe

And yet, when it comes to the closest visual cousin you’ll see on a British road, I can’t find a single opposition, invalidity, or infringement claim aimed at Extra.

Lovin’ It

Even stranger, McDonalds DID operate motorway services; their first was opened at Markham Moor in 1991 and by ‘93 Chelmsford and Appleby Magna had joined the ranks. After the deregulation of the service station planning process, they set their sights on opening their own service areas.
And this is where it gets even more interesting. Some Extra sites actually have a McDonald’s pedigree. Cullompton opened in 1999 as a McDonald’s service area before being sold to Extra’s Gold Star operation in 2003. Blackburn with Darwen was built by McDonald’s but leased to Extra.

McDonald’s used to be, and in many ways still is, a very rare sight on the motorway but most Roadchef sites now have a McDonald’s, often a refurbished Wimpy, with the majority having replaced most of their human staff with screens, and pushing app ordering. Apparently, it’s the future!

Our gut says that there has to be more to this… Maybe the resemblance simply doesn’t trouble either side. Maybe their commercial relationship makes litigation unattractive. Maybe there is an agreement sitting in a drawer somewhere that we’ll never see. Or maybe we’re seeing golden arches where there aren’t any. Without knowing what’s gone on behind closed doors, we simply don’t know.

Why You Need An Expert

Whether you are unsure if litigation is the right route for you, need advice on trade mark disputes, or you have other trade mark related queries, at Asenda Law we’re here to help.