BIG MAC Trademark Not That Big in the EU: How McDonald’s Failed to Prove Genuine Use of its EU Trademark

Foley Hoag LLP - Trademark, Copyright & Unfair Competition

On January 11, 2019, the Cancellation Division of the European Union Intellectual Property Office (“EUIPO”) rendered a surprising decision that revoked in its entirety the McDonald’s Company’s BIG MAC trademark registration, which had been registered in the EU since December 1998.

This is the latest chapter in a fight between McDonald’s and Supermac’s, a competing chain that operates fast-food restaurants in both parts of Ireland. The fight started in 2014, when Supermac’s wanted to expand into the EU and sought to register a Community Trademark for SUPERMAC’S. McDonald’s challenged the registration as likely to cause confusion with its BIG MAC mark. In a January 20, 2016 decision, the Opposition Division of the EUIPO agreed with McDonald’s and disallowed the SUPERMAC’S registration for those products and services that were the most relevant to McDonald’s business.

In April 2017, Supermac’s fought back and filed a request for revocation of the BIG MAC trademark for lack of genuine use. The request for revocation was filed for all the products and services covered by McDonald’s mark, including various kinds of sandwiches in classes 29 and 30, but also for services rendered or associated with operating and franchising restaurants in class 42.

This was a bold strategy, but it paid off for the Irish company. As to the registration for services (operating and franchising restaurants), the Cancellation Division unsurprisingly agreed with Supermac’s that “there is no single piece of evidence that refers to any of the registered services being offered under the” BIG MAC mark.

As regards the registration for products (sandwiches) the Cancellation Division similarly found that the evidence of use by McDonald’s of the BIG MAC mark was insufficient. This part of the decision may be surprising to some, but it provides useful guidance as to what is required to prove use. Trademark owners must establish the place, time, extent and nature of use for the relevant goods and/or services. These four factors are cumulative; failure to fulfill one condition will lead to revocation. In this case, the Cancellation Division found that the third factor, extent of use, had not been established, because of defects in McDonald’s evidence.

Affidavits? Not entitled to great weight

McDonald’s produced three affidavits, signed by representatives of McDonald’s companies in Germany, France and the UK, claiming significant sales figures and attaching examples of the sandwich packaging, promotional brochures and menus.

The Cancellation Division was not persuaded by this evidence, stating that “as far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence.” This is a useful reminder of an important cultural difference between the U.S. and Europe – generally speaking, witness evidence is given less weight in the EU.

Websites? Not convincing

McDonald’s also submitted printouts from its own websites. But these printouts failed to impress the Cancellation Division because “the mere presence of a trade mark on a website is, of itself, insufficient to prove genuine use unless the website also shows the place, time and extent of use or unless this information is otherwise provided.” McDonald’s had not, for example, provided any evidence about the number of visitors and/or sales through these websites.

Packaging materials and brochures? Not sufficient

As regards the packaging materials and brochures submitted by McDonald’s, the Cancellation Division did not find them convincing because no information had been provided “about how these brochures were circulated, who they were offered to, and whether they have led to any potential or actual purchases.” The documentary evidence therefore did not give sufficient information to support the sales and turnover figures in the affidavits.

In conclusion, the evidence provided was insufficient to show genuine use, even as to sandwiches. The Cancellation Division noted that the methods and means of proving genuine use are unlimited but that in this case, McDonald’s “chose to restrict the evidence submitted.” This may seem strange, but, in our experience, trademark owners are often reluctant to provide detailed commercial information that might be used, for example, by their competitors or by antitrust authorities. It is not always easy to find the right balance between the risk of disclosing information and the risk of losing your trademark rights. In any event, this is not the end of the fight, as McDonald’s has announced it intends to appeal.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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