Irish fast food chain Supermac’s has successfully cancelled McDonald’s EU trade mark for BIG MAC in a “David and Goliath” dispute.
The case arose after McDonald’s opposed Supermac’s own EU trade mark. Supermac’s then brought a revocation action against McDonald’s and challenged it to show genuine use of its BIG MAC trade mark in the EU for a continuous period of five years.
The word mark BIG MAC was registered for goods and services in classes 29, 30 and 42. McDonald's submitted evidence in the form of advertising and packaging of the relevant products showing that BIG MAC was used in EU Member States including the UK, Germany and France. The burden of proof was on them to do so.
The Cancellation Division of the EUIPO concluded that the evidence filed was insufficient to prove genuine use of the trade mark during the relevant period. It said:
Taking into account the submitted evidence as a whole, it is concluded that the documents do not provide conclusive information that the products marked with the EUTM are offered for actual sale, as there is no confirmation of any commercial transactions, either online, or via brick-and-mortar operations.
Amongst other things, the evidence failed to provide sufficient details to support the sales and turnover figures claimed. As such, the cancellation application was upheld.
This case highlights the need for even the largest of companies to jump through the necessary hoops and diligently file sufficient good quality evidence of genuine use in cancellation actions that can support the validity of a registration. The EUIPO frequently gives less weight to a statement drawn up by a party itself because of its personal interests in the case. This highlights the benefit of independent evidence, which is considered to carry a greater probative value.
All is not lost for McDonald’s as they have, according to the EUIPO Register, a newer registration for the BIG MAC mark which was accepted and registered in 2018. It would require separate action for McDonald’s to lose that right. Nonetheless, the loss of a registration dating back to 1996 will be a big blow to the world’s largest fast food chain. McDonald’s will likely appeal the decision to the EUIPO Board of Appeal and if they do so, the case will continue.