Last month, the European Intellectual Property Office (“EUIPO”) made a landmark decision to cancel McDonald’s “Big Mac” trade mark in favour of Irish fast food chain Supermac’s.
The decision was made on the basis that McDonald’s could not sufficiently prove that it had genuinely used its trade mark in the previous five years in respect of the goods and services for which it is registered.
Supermac’s, who had previously been prevented from expanding their brand beyond Ireland because of the similarities with “Big Mac”, relied on Article 58(1)(a) of the European Union Trade Mark Regulations 2017 when bringing the revocation proceedings on the grounds of non-use. This Article states that, on application, the rights of a trademark owner shall be revoked “if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use…”
Genuine use, which requires actual use (and not merely token use) of the mark on the market for the goods and services protected by that mark, must also be consistent with the essential function of a trademark, which is to guarantee the identity of the origin of the goods or services to the consumer, to distinguish the product/services from others that have another origin.
The burden of proof was on McDonald’s to prove genuine use of its 1998 registered trade mark in the five years proceeding Supermac’s revocation application which was submitted on in April 2017. In doing so, it submitted evidence in the form of: affidavits signed by representative companies in Germany, France and the UK; brochures and printouts of advertising posters showing the “Big Mac” hamburger; printouts from their own EU websites which depict the “Big Mac”; and a printout from Wikipedia providing information on the “Big Mac” hamburger.
When it comes to proving genuine use, the EUIPO is not looking to assess commercial success or to review economic strategy, instead it must have regard to all the facts and circumstances relevant to establishing whether commercial exploitation of the mark is real. The evidence of genuine use provided must establish the place, time, extent and nature of use of the mark for the goods and services for which it is registered.
When reviewing the evidence of use provided by McDonald’s, the EUIPO found that McDonald’s failed to prove the extent of the use. Whilst the evidence showed the presence of the trade mark on websites, in brochures and in advertising campaigns, it was insufficient in proving genuine use as it did not also show the place, time and extent of the use commercially. Ultimately, therefore the EUIPO concluded that “the evidence…does not provide sufficient details concerning the extent of use; other than exhibiting the sign in relation to goods which could be considered to be part of the relevant goods, these materials do not give any data for the real commercial presence of the [“Big Mac” trademark] for any of the relevant goods or services.”
On the basis that insufficient evidence of genuine use was provided by McDonald’s, the EUIPO ruled that Supermac’s revocation action was successful and that the “Big Mac” trade mark be revoked at the date of application (being 11 April 2017).
McDonald’s have stated that they intend to appeal this decision.
In the meantime, however, and no doubt in response to all of this, McDonald’s have launched an advertising campaign in the UK in respect of a new “Big Mac” with bacon, clearly designed to emphasize “Big Mac” as a McDonald’s brand. Whilst this will not affect the revocation decision per se, it could make it harder for other brands to use the same or similar marks within Europe.