Why did the shared element decide this case?

BIG and SUPER are ordinary laudatory words carrying no distinctive weight, so what remains on each side is MAC. Conceptual similarity was assessed as at least average, which combined with the closeness of the services to establish likelihood of confusion.

Is a shared word always a problem?

No. In the Rodent Off case the added word was held dominant because it denoted a specific category of goods and shifted the conceptual centre of the sign. What matters is whether the added elements carry independent meaning.

Does long coexistence in one member state help?

Not by itself. Around four decades of coexistence in Ireland without evidence of confusion was insufficient for a mark covering the entire European Union, because the EU trademark has unitary character.

Does refusal of the EU application stop the business?

No. The decision refuses EU-wide registration; it does not prevent the applicant from trading under its own name in its home market.

SUPERMAC'S v BIG MAC: When the Shared Element Decides

Q: Does real-world use prevent confusion findings?

No. The comparison is made in the abstract, on the basis of the goods and services as applied for and registered, not on how the parties actually trade.

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In our Rodent Off case a shared word with a famous brand did not lead to refusal. This case is the mirror image: the same analytical framework, the opposite outcome.

The case in brief

Applicant: Supermac's (Holdings) Ltd, an Irish fast-food chain founded in 1978 in Galway, with more than 100 outlets;
Opponent: McDonald's International Property Company, owner of the earlier mark BIG MAC registered for meat sandwiches;
Sign applied for: SUPERMAC'S for fast-food restaurant services;
Outcome: the Board of Appeal upheld refusal for likelihood of confusion, article 8(1)(b) of Regulation (EU) 2017/1001;
Date: 30 June 2026, case R 1216/2025-5.

Why MAC outweighed everything

The Board broke both signs down. BIG and SUPER are ordinary laudatory words indicating size and quality respectively; neither carries distinctive weight. What remains on each side is MAC — and that is where the marks meet.

Visual and phonetic similarity were therefore assessed as below average, but conceptual similarity as at least average. That is what carried the case, combined with the closeness of the goods and services.

Compare with the opposite outcome

In Rodent Off v OFF! a shared element was also central — and the opposite logic prevailed. There the added word was held dominant, because it denotes a specific category of pest and shifts the conceptual centre of the sign. Here the added words were merely laudatory and shifted nothing.

The practical conclusion: there is no universal rule that a shared word is always a problem, or always safe. What matters is whether the elements you add carry independent meaning.

Two further lessons

Registration is assessed in the abstract. Supermac's argued that BIG MAC is a product name and SUPERMAC'S a restaurant name, so nobody confuses them in real life. The Board's answer: the comparison is made on the basis of the goods and services as applied for and registered, not on how the parties happen to trade.

Coexistence in one country does not save an EU application. The parties had coexisted in Ireland for around four decades without evidence of confusion, but that is not sufficient for a mark covering the entire European Union — one of the structural consequences of the unitary character of the EU trademark.

For the brand itself the decision is not fatal: it does not prevent Supermac's from trading under its own name in Ireland. It refuses the EU-wide registration.

If you are filing in Ukraine and the EU

The three-limb analysis is the same in Ukrainian practice, and so is the dominant-element question — as the Rodent Off case shows. We advise on both jurisdictions and handle Ukrainian filings and oppositions. More on how we work with IP firms.

Ask about clearance in Ukraine

Send us the sign and the classes — we will tell you what the Ukrainian register shows and where the risks sit. Or write to info@patent.rv.ua.

Source: decision of the Board of Appeal of the EUIPO of 30 June 2026 in case R 1216/2025-5.

Decisions of the Appeal Chamber are public documents, published among other things so that the practice can be studied. This note analyses the reasoning of the decision — the arguments raised and how the Board assessed them — not the procedural history of the case. It contains no assessment of the conduct of the parties or their representatives. Rivnepatent did not represent either party. This material is for information only and is not legal advice.

Author: Volodymyr Tarasiuk, Ukrainian patent and trademark attorney, Reg. No. 529

Source: Decision of the Fourth Board of Appeal of the EUIPO of 10 August 2026 in case R 1791/2025-4 (CRASH birds (fig.) / ANGRY BIRDS et al.), cancellation proceedings No C 66 530, EUTM No 18 950 941. The decision in the EUIPO eSearch Case Law database.