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Is a Big Mac meat or chicken? Thoughts on the recent General Court decision

As an IP lawyer, I am always pleased to see trade mark disputes receiving attention in the press – it can be a good way to raise the profile of these valuable rights and encourage entities to think before adopting a new name or logo. Over the past week, friends and family have asked for my view on the Big Mac decision. It is this: a Big Mac is not a chicken sandwich. I appreciate there was a chicken Big Mac in France at one point (‘Grand BIG MAC Chicken’), but to me a Big Mac is a beef burger. And I do not want to debate this point, but it is the greatest McDonald’s burger of all time.

Should Big Mac be registered for chicken sandwiches? Not if there is no use for such goods. Can I therefore launch a Big Mac chicken sandwich? No!

The press has made the recent judgment of the General Court of the in Case T-58/23, part of the ongoing dispute between Supermac’s (Holdings) Ltd and McDonald’s International Property Co. Ltd, sounds like a crushing blow, but it is not as terrible for McDonald’s as it may seem. McDonald’s still has a registration for meat sandwiches and for foods prepared from meat products, as they did demonstrate use of Big Mac for their meat sandwiches. The goods and services lost in the recent decision were ‘chicken sandwiches’, ‘foods prepared from poultry products’ and ‘services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods’.

If a third party were to try to use or register Big Mac for a chicken burger or sandwich, McDonald’s registration for meat sandwiches could be used to argue the goods are similar (if they cannot show that the chicken sandwich and meat sandwich are identical) and there is a likelihood of confusion. McDonald’s can also argue against such third party use on the basis of their reputation. All is not lost for McDonald’s!

However, the decision is a reminder that evidence is key in trade mark disputes. McDonald’s initially lost their Big Mac registration for everything, including meat sandwiches, following a challenge by Supermac’s. McDonald’s were able to claw back some terms following an appeal, but with a mark used as extensively as Big Mac, it seems unfortunate that their initial evidence was not deemed sufficient for sandwiches or burgers. Evidence filed to prove use of a trade mark registration must be of a sufficient standard if it is to maintain the registration, and include an indication of the extent of use of the mark in connection with the goods in the relevant territory, including information such as the volume of sales, the length of the period of use of the mark, the frequency of use, and marketing efforts. Some brand owners retain better records than others, and where material is lacking online searches, including web archives, may assist to bolster the proof of use to be filed. 

McDonald’s still has an EU trade mark registration for their valuable Big Mac brand, covering the meat sandwiches they use this mark on, and we must wait and see if they will appeal the General Court’s decision to try to broaden the goods they are able to retain. In the meantime, rather than devise a Big Mac branded chicken product, third parties should heed this decision as a reminder that if you cannot prove you have used it, you may lose it!  Keep good records of your trade mark use and invest time in proving that use when required.

The European Court of Justice found that McDonald's could not show it had made genuine use of the trademark for a continuous period of five years.

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