Although it may be one of the most famous burgers in the world, on 15 January 2019, Supermac’s (Holdings) Ltd was successful in seeking the cancellation of McDonald’s International Property Company Ltd (McDonald’s) EU trade mark registration for BIG MAC for burgers or restaurants.
Under Article 58(1)(a) of the EU Trade Mark Regulation (EU) 2017/1001 (EUTMR), an EU trade mark can be cancelled where:
McDonald’s filed purported evidence of use of the BIG MAC Trade Mark in EU member states in response to the application for cancellation. The evidence included:
However the EUIPO concluded that on reviewing the evidence there had been not been genuine use, leading to the cancellation of the BIG MAC Trade Mark.
In reaching its decision the EUIPO made findings that:
Lessons to be learned
This decision demonstrates the significance of being strategic in filing evidence of use in proceedings before the EUIPO. Simply relying on the commercial success of a trade mark is insufficient to counteract poorly formulated evidence. The decision also confirms the trend established in the controversial Kit Kat case that EU trade mark law is moving in the direction of requiring use in most (if not all) EU Member States, a worrying trend for brand owners who have relied solely on EU trade mark rights.
It is likely McDonald’s will appeal this decision and, if so, it will be worth seeing what evidence McDonald’s will rely upon.