McDonald’s ‘BIG MAC’ partially cancelled

Even famous trade marks are subject to the requirement of genuine use and may be revoked if the owner does not submit sufficient evidence, as a recent decision from the General Court concerning McDonald’s ‘BIG MAC’ trade mark shows (case T-58/23).

Background

McDonald’s International Property Co. Ltd (‘McDonald’s’) owns EU trade mark no. 62638 ‚BIG MAC‘, which was registered on 1 April 1996 for goods and services in classes 29, 30 and 42.

On 11 April 2017, Supermac’s (Holdings) Ltd (‘Supermac’s’) filed an application for revocation of the ‘BIG MAC’ trade mark based on non-use (now Art. 58(1)(a) EUTMR).

The Cancellation Division of the European Union Intellectual Property Office (‘EUIPO’) revoked the trade mark for all goods and services. Upon appeal, the Board of Appeal of the EUIPO (‘BoA’) partially annulled the EUIPO’s decision and found that McDonald’s established genuine use for the following goods and services:

Class 29: Foods prepared from meat and poultry products, meat sandwiches, chicken sandwiches.

Class 30: Edible sandwiches, meat sandwiches, chicken sandwiches.

Class 42: Services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drivethrough facilities; preparation of carry-out foods.

Supermac’s brought an action before the General Court against the BoA’s decision with the exception of ‘meat sandwiches’, i.e. Supermac’s accepted that the BoA found genuine use of ‘BIG MAC’ for ‘meat sandwiches’.

The General Court’s decisions

The General Court partially upheld the appeal and annulled the BoA’s decision with respect to ‘chicken sandwiches’ in classes 29 and 30, ‘foods prepared from poultry products’ in class 29 and the services in class 42.

Genuine use for ‘chicken sandwiches’ and ‘foods prepared from poultry products’

Supermac’s argued that ‘meat sandwiches’ and ‘chicken sandwiches’ were wrongly classified in classes 29 and 30. They only belonged to class 30. The General Court rejected this argument because goods can be classified in different classes and even an incorrect classification does not lead to the revocation of a trade mark.

The General Court assessed whether genuine use was proven for ‘chicken sandwiches’. McDonald’s produced the following items of evidence:

· A poster:

· A menu board:

· Screenshots from TV commercials:

· Screenshots from McDonald’s Facebook account:

The General Court found that these items do not show the extent of use, in particular the volume of sales, the length of the period of use and the frequency of use. Therefore, the judges held that McDonald’s did not establish genuine use for ‘chicken sandwiches’ and, as a consequence, for ‘foods prepared from poultry products’.

Genuine use for ‘foods prepared from meat products’ and ‘edible sandwiches’

It was undisputed that McDonald’s had been using ‘BIG MAC’ for ‘meat sandwiches’. The question Supermac’s raised was whether this constituted use for the broader category of ‘foods prepared from meat products’.

The General Court recalled consistent case law on the principle of partial use. If a trade mark has been registered for a category of goods or services which is sufficiently broad to be divided into independent subcategories, genuine use in relation to part of those goods or services affords protection only for the subcategory or subcategories to which the goods or services belong. If, however, the goods or services are already defined so precisely and narrowly that it is not possible to subdivide them, then genuine use of the mark for those goods or services covers the entire category. 

Whether a broader term can be divided into subcategories depends on whether the goods and services falling under the broader term form a single group, which cannot be divided other than in an arbitrary manner. The criterion of the purpose or intended use of the goods and services is of fundamental importance in the definition of a subcategory.

 

The principle of partial use is supposed to strike a balance between the trade mark owner’s interests not to be stripped of all protection for goods and services that are not essentially different from the ones for which the trade mark has been used, and the public’s interest in not rendering trade marks unavailable for categories of goods for which no use has been established.

The General Court confirmed that the goods ‘foods prepared from meat products’ and ‘meat sandwiches’ have the same intended use or purpose because they are meant to be consumed and intended to meet specific nutritional needs.

Supermac’s arguments that ‘foods prepared from meat products’ cover a wide range of goods which vary greatly in terms of consistency and that McDonald’s ‘meat sandwiches’ are more commonly called ‘hamburgers’ was rejected because the nature of the goods within a specific category is irrelevant in defining a subcategory.

The judges concluded that ‘food prepared from meat products’ constituted a sufficiently coherent category, which could not be divided further. Therefore, McDonald’s genuine use of ‘BIG MAC’ for ‘meat sandwiches’ also constituted genuine use for ‘foods prepared from meat products’.

The Court applied the same reasoning to ‘edible sandwiches’ for which the ‘BIG MAC’ trade mark was and remains registered.

Genuine use for services in class 42

The BoA found that the services in class 42 concerned restaurant services which are directed at the end-consumer. It found that

(1) The ‘MCDONALD’s’ trade mark enjoyed a reputation for fast-food restaurant services and for fast-food products and that ‘BIG MAC’ was also well-known among the general public.

(2) ‘BIG MAC’ had not only been used to designate a specific ‘meat sandwich’ but was a ‘flagship’ product, which had been inextricably linked to McDonald’s for more than 40 years.

(3) The public established a link between the ‘BIG MAC’ and the restaurant services.

For these reasons, the BoA held that ‘BIG MAC’ was also used for restaurant services.

The General Court found that the services in class 42 are not targeting end-consumers but professionals in the restaurant and food services industry.

Further, the judges held that use of a trade mark for goods cannot also constitute use for services.

Beyond that, the Court found that the reputation of one trade mark (‘MCDONALD’s’) is irrelevant in the assessment of genuine use of another mark (‘BIG MAC’).

Since all items of evidence submitted by McDonald’s only showed use of ‘BIG MAC’ for products and not for services, the General Court concluded that the BoA erred in accepting genuine use of the contested trade mark for the services in class 42.

Comment

The General Court’s press release on this case (here) is titled “McDonald’s loses the EU trade mark Big Mac in respect of poultry products”. But did it really? Poultry and chicken arguably qualify as ‘meat’. As a consequence, the revocation of the ‘BIG MAC’ trade mark for ‘chicken sandwiches’ and ‘foods prepared from poultry products’ does not reduce McDonald’s trade mark protection because these goods are still covered by the broader terms ‘edible sandwiches’, ‘meat sandwiches’ and ‘foods prepared from meat products’.

The decision should cause applicants for EU trade marks to consider applying for broader terms and not to limit the list of goods and services to the specific products offered. This may provide them with more flexibility even after the end of the five year grace period for non-use.

The judgment is furthermore interesting insofar as the General Court mentioned that, inter alia, information on the sales volume of the ‘BIG MAC CHICKEN’ was not provided. The case law of the Court of Justice of the EU suggests that a trade mark owner is not required to disclose trade secrets when establishing genuine use (case C-183/21 at para. 44). Non-public information on sales figures can be considered a trade secret, meaning that their disclosure must not be required.

Finally, you may wonder whether the reference to class 42 with respect to restaurant services etc. is a typo. According to the latest Nice Classification, restaurant services and the like fall in class 43. The Nice Classification in force at the time the ‘BIG MAC’ trade mark was filed was the sixth edition, which only had 42 classes (and not 45 as the current one). According to the Explanatory Notes on the sixth edition, class 42 contained “all services which could not be placed in other classes”, meaning that it also covered restaurant services. Some countries reclassify goods and services in accordance with the latest edition/version of the Nice Classification upon renewal of a trade mark (or in the case of Germany used to do so) but many do not. This makes trade mark clearance searches challenging because you need to consider that potentially conflicting trade marks may be found in classes in which you do not expect them.