Launched in Pittsburgh in 1967, Big Mac has established itself worldwide as one of the most popular and iconic Mac Donald’s products.
However, on January 11, 2019, the European Union Intellectual Property Office (EUIPO) made an order for revocation of the European trademark “Big Mac” for non-use.
This trademark was registered in classes 29 (prepared foods in particular), 30 (sandwiches in particular) and 42 (services associated with the operation and franchising of restaurants, take-away sales in particular).
The origin of the conflict was the desire of a company named Supermac’s to expand beyond Ireland. McDonald’s referred to the similarity between Big Mac and Supermac, which could lead to confusion among consumers.
Thereupon in 2017 Supermac’s filed a revocation request of the European Union trade mark (EUTM) “Big Mac” (No. 000062638), which was protected since 1996.
Supermac’s argued in the proceedings that the EUTM was not used genuinely in a period of five years in accordance with art. 58 (1) (a) EUTMR. Genuine use occurs when the mark is actually used on the market in conformity with its essential function, which is to preserve the identity of the origin of the goods or services for which it is registered.
In order to prove the genuine use of the trademark in the past five years, McDonald’s submitted the following evidence to the Cancellation Division:
- Brochures and printouts of advertising posters, dated between 2011 and 2016;
- Three affidavits signed by McDonald’s representatives detailing sales figures for the period 2011-2016;
- A printout from a Wikipedia entry (in English) providing general information on McDonald’s Big Mac;
- Printouts from a number of McDonald’s websites, dated between 7/1/2014 and 3/10/2016.
In this regard, it has been criticized that these evidences all come from the defendant himself or from his employees considered as having a personal interest in the litigation. There is also no demonstration of actual use or extent of use. The brochures and printouts do not show when, where and how many sales took place.
For these reasons, the EUIPO assessed the proofs as insufficient. Accordingly, Supermac’s application for revocation of registration of the trade mark “Big Mac” was granted.
This decision appears to be particularly strict. While the requirement to provide proof of genuine use of a trademark is a necessity to ensure that the trademark is used in the market in accordance with its essential function (i.e. preserve the identity of the origin of the goods or services for which it is registered) , it is surprising that the EUIPO has been so rigorous with regard to a trademark such as “Big Mac”.
Indeed, it is difficult to dispute that the term “Big Mac ” refers to a flagship product of McDonald’s for a significant number of consumers worldwide. As a result of this notoriety, it could thus have been considered that the trademark “Big Mac” already fulfilled the essential function of a trademark and therefore imposed a lower requirement as regards proof of its genuine use.
However, it is still not advisable to use the brand name “Big Mac” as the decision could only be provisional. McDonald’s has already announced its intention to appeal the decision.
Furthermore, in 2017 McDonald’s has once again registered the term “Big Mac” as a European Union trade mark (No 017305079). Although the scope of protection of this registration is significantly smaller than that of the previously registered trademark, the registration cannot be contested for five years.
In any event, this decision recalls the necessity for trademark owners to be very vigilant in collecting and preserving evidence of use of their trademarks. In this respect, it is highly recommended to be assisted in these formalities by someone who is familiar with the requirements of intellectual property offices and courts on these issues.
Pierre FATON in collaboration with Elisabeth HEIL