Introduction

In the European Union Intellectual Property Office’s (“EUIPO”) decision in Supermac’s (Holdings) Ltd v McDonald’s International Property Company, Ltd dated 11 January 2019, the EUIPO revoked McDonald’s rights in respect of the trade mark “BIG MAC”. The reason for the decision was that McDonald’s had failed to provide sufficient evidence to the EUIPO to prove that the trade mark “BIG MAC” was genuinely used in the European Union (“EU”) within a continuous period of five years.

Background

Supermac's (Holdings) Ltd, which runs an Irish fast food chain under the name “Supermac’s”, filed a request for revocation of McDonald’s trade mark “BIG MAC” against all the goods and services covered, alleging that the trade mark had not been put into genuine use in the EU within a continuous period of five years in the past, for the goods or services for which it is registered, and there are no proper reasons for non-use. The goods and services covered by the “BIG MAC” trade mark include Class 29 (foods prepared from meat, pork, fish and poultry products, meat sandwiches, etc.), Class 30 (edible sandwiches, meat sandwiches, pork sandwiches, etc.) and Class 42 (services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive- through facilities, etc.).

McDonald’s submitted the following evidence as proof of use:

1.        three affidavits signed by representatives of McDonald’s in Germany, France and the United Kingdom, detailing sales figures for the period between 2011 and 2016;

2.        brochures and printouts of advertising posters, in German, French and English, showing, inter alia, “Big Mac” meat sandwiches; and packaging for sandwiches (boxes);

3.        printouts from the McDonald’s websites in different countries in EU; and

4.        a printout from en.wikipedia.org providing information on the “Big Mac” burger.

 

EUIPO’s analysis

Regarding the affidavits, although the EU regulations allow statements that are drawn up by interested parties themselves or their employees, such statements are generally given less weight than independent evidence. The probative value depends on whether or not they are supported by other types of evidence (labels, packaging, etc.) or evidence originating from independent sources.

As regards the printouts from McDonald’s own websites, promotional brochures and packaging, EUIPO noted that these evidences originate from McDonald’s itself. It could not be concluded from the web pages whether, or how, a purchase could be made or an order could be placed. There is no information of a single order being placed. The connection between McDonald’s websites and the eventual number of items offered or sold could not be established. There is also no information about how the brochures were circulated, to whom they were offered, and whether they have led to any potential or actual purchases. There is no independent evidence that shows how many products for which the packaging was used were actually offered for sale or sold. In other words, then EUIPO viewed that McDonald’s had failed to prove the extent of use of “BIG MAC”.

For the printout from en.wikipedia.org, EUIPO noted that Wikipedia entries are not reliable sources of information as they can be amended by Wikipedia’s users. They are only relevant for supporting other independent evidence. As the other evidences in this case fail to show the extent of use, the printout from Wikipedia could not change the conclusion reached.

EUIPO’s decision

EUIPO concluded that the evidence provided by McDonald’s do not provide conclusive proof that the products marked with “BIG MAC” are offered for actual sale, as there is no confirmation of any commercial transactions, either online, or via brick-and-mortar operations. Even if the goods were offered for sale, there is no data about how long the products were offered on the given web page or in other ways, and there is no information of any actual sales taking place or any potential and relevant consumers being engaged, either through an offer, or through a sale. Finally, as far as the services are considered, there is no evidence that refers to any of the registered services being offered under the trade mark “BIG MAC”.

Therefore, EUIPO concluded that the evidence does not allow the conclusion that “BIG MAC” was genuinely used during the continuous period of five years for the relevant goods and services. EUIPO stated that this finding was due to the fact that McDonald’s had chosen to restrict the evidence submitted. McDonald’s has a right to appeal within two months.

Conclusion

This case illustrates that whenever a trade mark owner faces a claim for revocation of trade mark due to non-use, the trade mark owner must provide sufficient evidence to prove not only the use of trade mark during the relevant period within the territory, but also evidence to prove the “extent of use”. It is preferable to have independent evidence from reliable sources, showing that, for example, orders being placed, number of items offered or sold, how the marketing materials were circulated, to whom they were offered, and whether they have led to any potential or actual purchases. Otherwise, brand owners may find themselves in a painful situation – as McDonald’s does in this case.

For enquiries, please contact our Intellectual Property & Technology Department:

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Important: The law and procedure on this subject are very specialised and complicated. This article is just a very general outline for reference and cannot be relied upon as legal advice in any individual case. If any advice or assistance is needed, please contact our solicitors.

Published by ONC Lawyers © 2019