Background

The BIG MAC registration in question covered a wide variety of goods, including meat sandwiches, mustard and (perhaps surprisingly) preserved and cooked fruits and vegetables. It also covered a range of services, including operating a restaurant, construction planning and consulting for restaurants.

In April 2017 Supermac’s applied to the EUIPO for revocation of the BIG MAC mark, arguing that McDonald’s did not put the BIG MAC mark to genuine use in the EU between 2012 and 2017 in relation to any of the goods and services for which it was registered, other than sandwiches. McDonald’s defended the application for revocation on the basis that the BIG MAC mark was used in a number of EU Member States and relied on evidence showing that the trade mark was used in its advertising and packaging. McDonald’s further claimed that it was “commonly known” that it sold millions of products under the BIG MAC trade mark.

What is genuine use?

The EUIPO can revoke an EU trade mark if, within a continuous period of five years, it has not been put to genuine use in the EU for the goods or services for which it is registered and there are no proper reasons for non-use. This means that a trade mark owner cannot sit on its rights – there must be actual use of the mark in the course of trade to guarantee the origin of the goods or services for which the mark is registered. In revocation proceedings the onus is on the trade mark owner to prove that the mark in question has been put to genuine use. This requires evidence that the mark has been used in connection with the sale or advertising of the relevant goods and services.

Evidence

To show genuine use of the BIG MAC mark in the EU, McDonald’s submitted three affidavits from employees in Germany, France and the UK which attested to significant sales of Big Macs between 2012 and 2017. McDonald’s also provided examples of menus, packaging, promotional brochures and printouts from its EU websites which included the BIG MAC mark and also the Wikipedia entry for Big Mac.

Decision of EUIPO

The EUIPO was highly critical of the quality of the evidence supplied by McDonald’s, in particular the lack of independent evidence linking McDonald’s marketing activities to sales of Big Macs.

In relation to the affidavits submitted, the decision states that an affidavit sworn by a trade mark holder or its employees will be given less weight than independent evidence, unless supported by other types of evidence. In the view of the EUIPO, the other evidence did not support the assertions made in the affidavits.

The EUIPO held that the mere presence of the BIG MAC mark on the McDonald’s websites was insufficient to prove genuine use. The decision stresses that the evidential value of printouts of websites can be strengthened by evidence that the website was visited and that orders for goods or services bearing the trade mark were actually made via the website. Crucially, McDonald’s did not provide any evidence that established the place, time, extent and nature of the use of the BIG MAC mark on its websites. The EUIPO was therefore unable to make a connection between the display of the BIG MAC mark on the McDonald’s websites and the sale of any Big Macs via the websites.

In respect of the Wikipedia entry for Big Mac, the EUIPO unsurprisingly noted that as Wikipedia can be edited by anyone, it is not a reliable source of evidence.

The EUIPO was similarly critical of the packaging and branding information that McDonald’s submitted. McDonald’s failed to show how the materials were circulated or to whom they were offered. There was also no independent evidence showing that the packaging and branding led to any potential or actual sales.

Taking into account all the evidence submitted to it, the EUIPO found that McDonald’s had not provided it with conclusive evidence that the BIG MAC trade mark was genuinely used in the EU. In particular, there was no evidence of any consumer transactions, whether in a restaurant or online. In short, McDonald’s did not submit evidence showing that Big Macs were sold to customers during the relevant period. Therefore, the EUIPO revoked the BIG MAC mark in its entirety from the date of Supermac’s application for revocation – even for sandwiches.

Key Lessons

This decision is a welcome reminder that genuine use of trade marks, including famous or well-known marks, must be established by evidence that shows the place, time, extent and nature of the use of the mark in question for the goods and services for which the mark is registered. The EUIPO, and other decision makers, will not look beyond the evidence provided and assume that there is genuine use of the mark because it is famous or well-known. Instead, the trade mark owner must establish, by detailed evidence, that the mark was used in the course of trade. While there are various ways to do this, providing relevant sales figures, invoices, advertising spend and details of web traffic which relate to the mark in question that establish the place, time, extent and nature of use of the mark should suffice.

In light of this high evidential burden to show genuine use of a mark, applicants for trade marks should also be wary of applying for overly broad specifications of goods and services because if they are put on proof of use, it may not be possible to provide the evidence required to show genuine use of all the goods and services covered by the registration, resulting in revocation in respect of those goods and services.

In the meantime, McDonald’s has announced that it intends to appeal this decision to the EUIPO Boards of Appeal. It is noteworthy that the Boards of Appeal will only accept new evidence where there are “valid reasons” why such evidence was not produced by McDonald’s in the original proceedings. We await with interest whether a ‘McFlurry’ of legal arguments will be made on this point.

The authors thank Patrick Coffey, Trainee, for his contribution to this article.