EUIPO says McDonald's 'BIG MAC' trade mark may be revoked due to lack of genuine use

Can the word EU trade mark (EUTM) 'BIG MAC' owned by McDonald's be revoked for non-use? The answer is 'yes'. 

The EUIPO Cancellation Division provided it further to an application for revocation filed by Irish company Supermac (Cancellation No 14 788 C).

What happened?

McDonald's is (or, rather, was) the owner of the word mark 'BIG MAC' for the following goods and services in Classes 29, 30 and 42 of the Nice Classification:


Supermac filed an application under Article 58(1)(a) of the EU Trade Mark Regulation, requesting the revocation - in its entirety - of 'BIG MAC', on grounds that the mark would have not been put to genuine use for a continuous period of 5 years.

In response to the application, McDonald's submitted evidence that 'BIC MAC' would be in use in a number of Member States, including in advertising and on the packaging of relevant products. 

The applicant noted that the evidence submitted by McDonald's would prove genuine use for sandwiches, but not also in relation to the other goods and services for which the registration was obtained. A such, the application was to be upheld.

McDonald's replied noting that the mark was genuinely used in Germany, France, and the UK, and that this would prove genuine use in the EU. Furthermore, use of 'BIG MAC' in relation to sandwiches would also mean use of the trade mark in relation to its ingredients.

The decision

When it comes to revocation proceedings on grounds of non-use, the burden of proof does lie with the trade mark owner, not the applicant. The latter cannot be in fact requested to prove a negative fact, that is non-use of the former's registered sign.

McDonald's submitted the following evidence that the Cancellation Division:
  • 3 affidavits signed by McDonald's representatives detailing sales figures for the period 2011-2016;
  • Brochures and printouts of advertising posters, dated between 2011 and 2016;
  • Printouts from a number of McDonald's websites, dated between 7/1/2014 and 3/10/2016;
  • A printout from a Wikipedia entry (in English) providing information on McDonald's Big Mac.
Proof of BIG MAC's genuine use
within The IPKat team
The Cancellation Division deemed this evidence insufficient to prove genuine use during the relevant period of time (11/4/2012 - 10/4/2017). Although all evidence submitted must be appreciated as a whole and entails a degree of interdependence between the relevant factors (time, place, extent and nature of use), in this case the trade mark proprietor had failed to provide evidence that would prove genuine use throughout that period of time. 

Among other things, McDonald's had failed to provide third-party evidence and the brochures did not provide any details regarding how they were circulated and whether they led to any actual or potential purchases. As regards the Wikipedia entry, the Cancellation Division was not impressed by that piece of evidence either, noting that anyone can amend Wikipedia entries. As such, it would have been necessary to have this piece of evidence supported by "other pieces of independent concrete evidence".

The EUIPO concluded that: 
Even if the goods were offered for sale, there is no data about how long the products were offered on the given web page or in other ways, and there is no information of any actual sales taking place or any potential and relevant consumers being engaged, either through an offer, or through a sale. Finally, as far as the relevant services are considered, there is no single piece of evidence that refers to any of the registered services being offered under the EUTM. 

It follows, that an overall assessment of the evidence does not allow the conclusion, without resorting to probabilities and presumptions, that the mark was genuinely used during the relevant period for the relevant goods or services
Comment

The outcome of these proceedings might appear - prima facie - surprising, also considering the notoriety of McDonald's Big Mac. However, it is a useful reminder that, even if one owns a well-known trade mark that might have been clearly in use during the relevant period, one should not overlook the importance of the evidence - and its quality - that needs to be provided to prove such genuine use in the event of an application for revocation.

From reading the decision, it appears that Supermac somewhat also made the point that 'BIG MAC' would be (or was) a trade mark with over-broad class specifications. Also depending on how the Court of Justice of the European Union decides in the pending Sky/SkyKick referral, this might be a further point trade mark owners - whether current or potential - should pay significant attention to.    
EUIPO says McDonald's 'BIG MAC' trade mark may be revoked due to lack of genuine use EUIPO says McDonald's 'BIG MAC' trade mark may be revoked due to lack of genuine use Reviewed by Eleonora Rosati on Friday, January 18, 2019 Rating: 5

3 comments:

Anonymous said...

One aspect that has been overlooked by most parties, is the re-filing McDonalds made for the identical trade mark in October 2017 (EU017305079), after the cancellation action was filed but before the decision was issued . This seems to be a clear bad faith filing that was only made to try avoid the non-use issues with the earlier trade mark. As a result the re-filing must be practically unenforceable in any situation.

When you are in a hole you should stop digging.

Miau said...

A few years ago I handled a similar case but concerning a TM evergreening by the registration of a fresh version of a non used TM whose first registration was almost arriving to the 10 years term. In such a case it should be deemed that bad fath taints the delai de grace!

Glad to be out of the madhouse said...

Quite frankly, the well-known firm representing Mickey D's in this case is in for a world of hurt.

I wonder also what the tax authorities will think of their failure to prove genuine use of a trademark for which their European subsidiaries and franchisees surely pay hundreds of millions in royalties...

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