Big Mac brought down to size
In a surprise decision from the EUIPO, the office has revoked McDonald’’s EU Trade Mark for BIG MAC on the grounds of non-use. It goes to show that however well-known a trade mark may be in reality, if you do not take care when filing evidence in non-use proceedings, you can still lose your registration.
As part of an ongoing trade mark dispute between McDonalds and an Irish chain of family restaurants, which trades under the name “Supermac’s”, Supermac’s applied to revoke McDonald’s EU trade mark for BIG MAC on the grounds of non-use. Supermac’s aim appears to have been to secure the revocation of the mark to the extent that the registration covers things other than meat sandwiches (in particular, restaurant services).
However, on reviewing the evidence of use filed on behalf of McDonald’s, the EUIPO has revoked the mark in its entirety.
McDonald’s filed three affidavits from representatives of McDonald’s companies in the EU, together with brochures and advertising posts, printouts from a number of McDonald’s websites aimed at consumers in the EU, and an extract from Wikipedia.
The EUIPO was not convinced that this evidence showed genuine use of the mark. According to the Cancellation Division, the website printouts showing the mark were not accompanied by any data evidencing the number of orders placed through the websites or visitors to the sites from the EU during the relevant period. There was no information provided about how the advertising brochures were circulated, who to, or if they led to any purchases. There was also no independent evidence showing how many products bearing the mark were sold or offered for sale.
McDonald’s did provide sales figures for BIG MAC branded products in the affidavits it filed, but the EUIPO is wary of information given by representatives of a trade mark proprietor in written statements, unless supported by documents such as invoices, receipts, and independently audited accounts.
Overall, the Cancellation Division concluded that McDonald’s evidence did not provide “conclusive information that the products marked with the [Big Mac trade mark] are offered for actual sale, as there is no confirmation of commercial transactions, either online, or via brick-and-mortar operations.”
As the Cancellation Division noted, EUTM proprietors have many available methods and means for proving genuine use of a trade mark. If the proprietor does not, however, provide adequate evidence of genuine use of a mark in the EU, regardless of how well-known it may be to the general public, it will be revoked.
The decision does not mean an end to the BIG MAC EU trade mark, as the decision is subject to appeal. It is also unlikely to bring an end to the dispute with Supermac’s, as McDonald’s has numerous national trade mark registrations for BIG MAC in EU countries and no doubt also enjoys unregistered rights in the BIG MAC mark in many of them. Supermac’s has, however, won a significant victory and the case is another warning that what matters in trade mark proceedings before the EUIPO is not just whether you use your trade mark, but whether you can properly prove it.
For more information please contact David Fyfield on +44 (0)20 7203 5200 or at david.fyfield@crsblaw.com.
