Many will have reacted with surprise at the widely reported news that McDonald’s had lost its registered EU trade mark for BIG MAC at the European Union Intellectual Property Office (EUIPO) following a cancellation action by Irish fast food chain, Supermac’s: Supermac’s (Holdings) Ltd v McDonald’s International Property Company Limited. Supermac’s successfully argued that BIG MAC had not been put to genuine use for all of the relevant goods and services (in classes 29, 30 and 42). The BIG MAC of course is synonymous with McDonald’s and millions are sold every year, including across the EU. However, the burden of proof was on McDonald’s to prove genuine use of its mark in relation to the relevant goods and services and, in this case, McDonald’s failed to do so, as its evidence did not meet the grade. Evidence of use must show the place, time and extent of the use, and should include independent evidence, not just evidence from the trade mark owner.
The decision highlights that, irrespective of how popular a mark may be, a trade mark owner must not assume that genuine use will be established by default, they must prove the genuine use through their evidence.
Supermac’s is an Irish fast food chain founded in the west of Ireland in 1978. Since then it has expanded across Ireland and Northern Ireland, and now has 106 outlets in total. McDonald’s objected to Supermac’s expansion beyond Ireland, and its corresponding EU trade mark applications, on the basis that wider use and registration of SUPERMAC’S would confuse customers.
McDonald’s had registered BIG MAC on 22 December 1998 for a wide range of food items and associated services in classes 29, 30 and 42. In 2017, Supermac’s applied to cancel the mark on the grounds there had not been genuine use for a continuous period of five years since registration.
Satisfactory evidence of genuine use must establish the place, time, extent and nature of the use and the burden of proof was on McDonald’s, as the owner of the trade mark. McDonald’s did submit evidence of use, including witness statements providing sales figures and packaging together with promotional material and website extracts, focussing on the German, French and English markets.
However, the EUIPO criticised McDonald’s evidence for the following reasons:
- Affidavits from McDonald’s employees would be given less weight, in the absence of other independent evidence. Whilst evidence from a proprietor is not completely worthless, it will have less probative value if it is not supported by independent evidence.
- Printouts from websites showing the use of the trade mark BIG MAC was not sufficient if the website did not also show the place, time and extent of use, or if this information was not provided. In particular, evidence could include evidence of visits to the website, together with orders being made through the website by a certain number of customers in the relevant period and territory. Brand owners should ensure that they keep records of Internet traffic to their websites and evidence of how many products were sold.
- Brochures, packaging, menus and advertising posters were put in evidence showing the BIG MAC mark but no information was given on how the brochures etc were circulated, who they were offered to, and whether they led to any actual/potential purchases.
Wikipedia evidence on the history of the Big Mac was unreliable as a source of information as Wikipedia entries can be amended by users; again, such evidence will need to be supported by other pieces of concrete independent evidence.
The case highlights that trade mark proprietors cannot simply rely on the reputation and assumed common knowledge of the widespread use of a product to maintain a trade mark registration. The burden of proof is on the trade mark owner to convincingly prove that the mark is in ‘genuine use’ within the EU and that the use of the trade mark shown in evidence also relates to offer for sale and supply of those goods or services. It seems unlikely that McDonald’s will accept this decision, in light of the commercial value of the BIG MAC mark and the fact that it is a mark that is widely used in the EU, and may appeal the decision and, perhaps, attempt to provide further evidence. It is also worth noting that different standards exist for providing evidence of use in different jurisdictions. For example, the type of evidence provided would most likely have been sufficient to maintain a US registration that required a declaration of use to be filed. Brand owners should ensure they are not caught out by these differences.