On 11 January 2019 the EUIPO (EU Trademark and Design Office) Cancellation Division delivered a decision against McDonald’s EU trademark registration for BIG MAC, in which the Office revoked the registration due to McDonald’s not proving genuine use of the trademark. As numerous McDonald’s restaurants seem to have used the trademark in question as a name for a certain type of burger in various EU countries, this may appear to be somewhat surprising.

Brief background information

A revocation request was initiated by the Irish fast food chain Supermac’s as a reaction to McDonald’s attempt to restrict Supermac’s expansion beyond Ireland. In the given case Supermac’s argued that McDonald’s EU trademark registration 62638 for BIG MAC was not put into genuine use for a continuous period of five years prior to 2017 for the registered goods and services. McDonald’s filed evidence for use of the trademark in form of affidavits signed by representatives of McDonald’s companies in several EU countries, specimens of packaging, promotional brochures, printouts of advertising posters, printouts from local McDonald’s websites and a Wikipedia article on “Bic Mac”.

Findings of the EUIPO

After reviewing the above-mentioned documents and specimens, the EUIPO Cancellation Division found that “the evidence is insufficient to establish genuine use of the trade mark”. Here is why:

Written statements drawn up by the interested parties themselves or their employees are given less weight than evidence from third party. In order for such evidence to have a probative value, it has to be supported by other types of evidence

As regards submitted packaging material and promotional brochures, no relevant information on actual reach of them, or whether they have led to any potential or actual purchases was provided.

Printouts showing use of the trademark on various websites are insufficient to prove genuine use, unless information on place, time and extent of use is also provided, which was not the case.

Not surprisingly, a Wikipedia article was not considered as a reliable source of information.

To sum up, none of the submitted evidence provided conclusive information of any actual sales taking place or any potential and relevant consumers being engaged. Consequently, McDonald’s failed to prove genuine use of the BIG MAC trademark according to the guidelines of the EUIPO.

The EUIPO’s decision can be appealed until 11 March 2019.

Key takeaways

1. It is (almost) all about the numbers, therefore:

a) when submitting promotional material, including packaging material, remember to provide information on actual or expected reach of such material, i.e. how many potential or actual consumers may have seen it and when;

b) printouts from a website must be supported by information on internet traffic, hits attained at various points of time and relevant items offered for sale, where relevant;

c) to the widest possible extent, relevant sales numbers for the registered products / services bearing the trademark and independent evidence of same must be provided. As a main rule, examples of invoices (in anonymized form, where relevant) showing spread in geography, time and customers are considered as a valuable evidence.

2. Evidence originating from the trademark owner itself may definitely have a certain probative value, but it must be supported by independent third party evidence.

3. Submitted evidence must be dated and have a connection to the market concerned.