07/02/2019
On 11 January 2019 McDonald’s lost their “BIG MAC” EU trade mark registration. The mark had been registered in three classes, covering food, non-alcoholic beverages and restaurant services, since 1998.
The EU Intellectual Property Office (EUIPO) Cancellation Division revoked the registration after deciding that, on looking at the evidence, the global fast-food franchise had not put the mark to genuine use.
At first glance this looks like a surprising decision. McDonald’s is the world’s leading foodservice retailer, with 37,000 locations in over 120 markets. In 2018 McDonald’s was ranked the 10th most valuable global brand by Interbrand. The ‘Big Mac’ has been on McDonald’s menus since 1967 and is still a popular choice, with 75 million ‘Big Mac’ hamburgers sold in 2018 in the UK alone.
Background to the dispute
The revocation of the BIG MAC trade mark is the latest development in a long-running legal dispute between McDonald’s and the Irish fast-food chain Supermac’s over the syllable ‘MAC’.
Supermac’s founder and CEO, Pat MacDonagh (who earnt the nickname ‘Supermac’ playing Gaelic football in his youth) opened his first fast-food restaurant in Galway in 1978. By 2015 there were 106 Supermac’s restaurants across Ireland and Northern Ireland.
In 2015, McDonald’s opposed Supermac’s application to register the SUPERMAC’S trade mark in the EU. McDonald’s relied on their registration for BIG MAC, as well as McFLURRY, CHICKEN McNUGGETS, McWRAP, and others. The EUIPO decided that that the SUPERMAC’S trade mark was similar to McDonald’s trade marks and would lead to consumer confusion.
After losing this opposition in 2017, Supermac’s filed an application to revoke McDonald’s BIG MAC registration on the grounds that it had not been put to genuine use.
Revocation on the grounds of non-use
Once an EU trade mark has been registered it needs to be put to genuine use in the EU in relation to the goods and services covered by the registration. If the owner of an EU trade mark has not put it to use within period of five years following registration, or if the use of the mark has been suspended for an uninterrupted period of five years and use of the mark has not re-commenced prior to the application for revocation being filed, then the registration may be revoked. Any third party can apply to revoke a trade mark registration on these grounds.
The reason that many jurisdictions allow third parties to revoke trade mark registrations in this way is to ensure that trade mark registers do not become cluttered with unused marks. It also provides a mechanism to stop trade marks being registered for purely defensive purposes, that is, where the owner has no intention of using the trade mark but instead only wants to be able to stop others from doing so.
The burden of proof in a non-use revocation action lies with the owner of the mark under attack. They have to provide evidence that allows the Cancellation Division to conclude, without resorting to probabilities and presumptions, that the mark was genuinely used during the relevant period for the relevant goods and services. This evidence therefore needs to clearly show the duration, frequency, territorial extent and commercial volume of the use of the mark.
McDonald’s evidence
The evidence filed by McDonald’s included signed affidavits from German, French and British representatives of the company. These affidavits provided details of annual turnover and sales figures for the relevant period.
An affidavit is a written statement from an individual where an oath has been sworn that the contents are true. Article 97(1)(f) of the European Union Trade Mark Regulation states that sworn statements are admissible as evidence. However, statements made by independent sources are to be afforded more evidential weight than those made by the parties themselves. Therefore, the Cancelation Division decided that because McDonald’s representatives may be more or less affected by their personal interests in the matter, the contents of their affidavits were to be given probative value only insofar as they were supported by the remaining evidence.
The affidavits were accompanied by a selection of brochures and adverts relating to the ‘Big Mac’, print-proofs of the ‘Big Mac’ packaging, printouts from the McDonald’s website in 18 EU Member States and a printout of the Wikipedia entry for the ‘Big Mac’.
In assessing the remaining evidence, the Cancellation Division decided that the use of a trade mark on a website is not evidence of use of the trade mark in the course of trade. The printouts of websites that McDonald’s had filed did not show that any sales had actually taken place and were filed without any accompanying data on internet traffic or number of visitors.
The brochures were filed without any accompanying information on who they were circulated to or if they had ever led to a purchase of a ‘Big Mac’.
The ‘Big Mac’ packaging proofs were filed without any accompanying information on how many products were sold for which the packing was used, or where the sales took place.
The printouts from Wikipedia were considered unreliable evidence because the website can be freely edited by the public.
The Cancellation Division decided that the remaining evidence did not support the sales and turnover figures detailed in the affidavits. This allowed them to reach the conclusion that McDonald’s evidence overall was insufficient to prove that genuine use had been made of the BIG MAC trade mark during the relevant period of time.
McDonald’s wasted no time in announcing that they “intend to appeal the decision and are confident it will be overturned by the EUIPO Board of Appeals”.
Burger King’s publicity stunt in Sweden
On another note, long-time rival Burger King have exploited McDonald’s widely-reported loss for publicity. Burger King locations in Sweden have launched a campaign in which their ordinary menu items have been renamed in direct comparison to the ‘Big Mac’. Examples include “Like a Big mac but actually big”, the “Burger Big Mac wished it was” and “Kind of like a Big Mac but juicer and tastier”. Iwo Zakowsi, General Manager of Burger King Corporation’s Swedish operation has released a statement saying that “it’s too much fun for us to stay away”.
Comment
The lesson to take away from this decision is not to underestimate the importance of filing sufficient evidence of use when defending against a non-use revocation. An essential part of maintaining a trade mark registration is to keep a record of how it is used.
This is a first-instance decision of the Cancellation Division and as such is not final. Definitive conclusions cannot be drawn because it is very likely that an appeal will be filed.
As it stands, this first-instance decision reaffirms certain points of practice that are relevant to proving use of a trade mark. For instance, that website printouts can be of limited value as evidence of trade mark use, which is something to take on board when maintaining records of trade mark use. However, if there is an element of e-commerce to a website, then the use of a trade mark on that site would show use of the mark in connection with sales, particularly if the printouts were filed alongside information on the number of sales that had taken place and the territories where consumers had accessed the website and/or ordered goods to.
The Cancellation Division’s decision also sheds some light on the approach taken by the EUIPO when looking at the probative value of different types of evidence. In particular, how the assessment of the value of sworn statements differs from that taken by the UK Intellectual Property Office (UKIPO).
While the decision criticises each item of evidence in isolation, the Cancellation Division make it clear that the reason that McDonald’s failed to prove use of their mark is that the totality of their evidence was lacking. The EUIPO endorse an equitable approach to the assessment of evidence of trade mark use that applies to all trade marks, no matter the size of their reputation. Use of a trade mark can only be proved by the material filed.
By contrast, the UKIPO tend to make a more robust assessment of the evidence and are more inclined to take the commercial reality of the use of a trade mark into account. The UKIPO have previously issued decisions assessing the use of a famous and well-known mark where they have considered additional factors beyond the material filed as evidence and on some occasions will consider itself as having the equivalent of judicial notice that a mark has a reputation.
It follows then that it would be harder to fall into the same trap as McDonald’s when defending a non-use revocation in the UK. This is another reason why it can be advantageous to add a UK National registration to a trade mark portfolio.
The Burger King PR stunt in Sweden further highlights the benefit of securing national protection in addition to the region-wide protection that is granted by an EU registration, because McDonald’s do not have any national BIG MAC registrations in Sweden. However, this does not necessarily mean that this PR stunt is not an infringement risk. While there may be means other than trade mark registrations that McDonald’s can use to protect themselves from the detrimental use of their trade mark by a third party, the most important thing to remember here is that McDonald’s have not actually lost their BIG MAC registration at this point because the decision has not yet been made final.
In addition to this, McDonald’s own two further EU registrations, for “Big Mac” and “Grand Big Mac”, both of which are still registered. This shows the benefits of protecting the same mark through multiple registrations, which can provide additional protection in relation to specific goods and services or for a variant of the mark.
Depending on McDonald’s reaction, this stunt may also highlight the danger of pursuing risky PR strategies based on an EUIPO decision that has not yet been made final. While decisions affecting famous trade marks tend to receive a lot of attention in the press, as has been the case with the cancellation of McDonald’s “BIG MAC” EU registration, specialist advice should be consulted before acting on a recent decision in trade mark law.
