In what has been described as a “David versus Goliath” trademark dispute, the Cancellation Division of the European Union Intellectual Property Office (“EUIPO”) handed down a surprising decision cancelling the McDonald’s BIG MAC trademark registration entirely within the EU.

The trademark dispute over BIG MAC  began in 2014 when McDonald’s cited the trademark in an attempt to block the expansion of Supermac’s, an Irish fast food chain, into the EU. In response, Supermac’s filed a challenge of its own in an ultimately successful attempt to cancel the BIG MAC trademark registration on the basis that McDonald’s had not been putting the trademark to genuine use in the EU.

When a trademark is challenged for non-use, the burden is placed on the trademark owner to prove that the trademark is actually being used.  To prove use in an EU trademark dispute, the evidence must sufficiently establish the place, time, extent, and nature of use.  In this case, McDonald’s evidence of use included:

  1. Three affidavits signed by McDonald’s representatives in the UK, Germany, and France claiming significant sales of Big Mac sandwiches in their respective EU member states;
  2. Marketing and packaging materials;
  3. Printouts from McDonalds’ various European websites depicting the Big Mac sandwich; and
  4. A printout from McDonalds’ Wikipedia page providing information on the sale of Big Macs in various countries.

While the evidence displayed the BIG MAC trademark in relation to at least some of the relevant goods and services, the EUIPO ultimately held that McDonald’s failed to prove genuine use because the evidence presented did not establish the extent of use. The EUIPO’s decision was predicated, in part, on its finding that the submitted evidence lacked probative value (or weight) because almost all of the evidence originated from McDonald’s itself, rather than an uninterested third party. Further, the EUIPO found the evidence was deficient to prove use since there was “no confirmation of any commercial transactions, either online, or via brick-and-mortar operations … and no information of any actual sales taking place or any potential and relevant consumers being engaged, either through an offer, or through a sale.”

While the EUIPO’s decision is instructive for EU trademark owners when attempting to prove use of a trademark in the EU, this case also reinforces the importance for all trademark owners to maintain a diligent approach to trademark protection regardless of the trademark’s commercial success. It also serves as a fair warning that competitors will take advantage of these situations, as with Burger King.

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