In a recent decision by the EU Intellectual Property Office (EUIPO), the world-famous fast-food chain McDonald’s has had its EU trade mark registration for BIG MAC cancelled in its entirety. On the face of it, the reason for this seems surprising. The registration, which covers sandwiches, prepared foods and operating franchised restaurants, has been cancelled for non-use.

An eye for an eye, a Big Mac for a Supermac

The applicant for cancellation was an Irish fast-food chain named Supermac’s, which filed the action in response to a trade mark opposition filed by McDonald’s against its EU application for SUPERMAC’S. Supermac’s sought to cancel McDonald’s’ trade mark registration on the basis that the BIG MAC trade mark had not been put to genuine use by McDonald’s in the EU in the five years following registration.

A Big Macstake

In response, McDonald’s filed evidence of use to try to defeat the action, including:

  • three affidavits from its representatives in the UK, France and Germany (the EU countries where most use of the BIG MAC brand had taken place), with examples of packaging, promotional brochures and menus attached
  • brochures and printouts of advertising posters in German, French and English showing BIG MAC sandwiches
  • images of packaging for the sandwiches
  • website printouts
  • a Wikipedia entry

The affidavits claimed significant sales and turnover figures relating to BIG MAC sandwiches between 2011 and 2016. However, as the evidence accompanying them wasn’t considered to support these claims, they were afforded very little weight by the EUIPO.

The EUIPO took the view that the brochures, posters, menus and packaging didn’t provide any information on who the products were offered to or whether they led to any actual or potential purchases.

The website printouts were from McDonald’s own websites, but were considered insufficient to prove genuine use, as no information on the place, time or extent of use was provided alongside the images. Furthermore, it was considered unclear as to how or even whether an order could be placed via the website.

The Wikipedia entry was insufficient to prove use, as the EUIPO deemed that the “multilingual, web-based, free encyclopedia based on a model of openly editable and viewable content” cannot be considered a reliable source.

Why the decision was made

The EUIPO generally gives little weight to affidavits/statements, unless actual evidence is filed to support the claims made within the statements. Furthermore, the EU manual of trade marks practice specifically states that in trade mark opposition and cancellation actions, the EUIPO restricts its examination of facts, evidence and arguments to those provided by the parties, although it can also take well-known facts into consideration. In this instance, the reputation of the BIG MAC burger was clearly not considered to be a well-known fact.

Ultimately the EUIPO decided to revoke the registration in its entirety, effective as of the date of application for revocation — 11 April 2017. On reviewing the evidence filed, the EUIPO concluded that "the documents do not provide conclusive information that the products marked with the [BIG MAC trade mark] are offered for actual sale, as there is no confirmation of any commercial transactions, either online, or via brick-and-mortar operations".

The decision is open to appeal and McDonald’s is certainly expected to do so. If it can’t reinstate the registration, this will clearly be a massive loss for the McDonald’s brand. It may have to look at alternative methods to try and stop third-party use of its marks, such as through the law of passing-off in the UK.

How to avoid your own Big Maccident

Evidence filed should show a real commercial presence in the relevant jurisdiction and for the relevant goods or services, together with actual commercial transactions, including the offering of goods for sale and any other data related thereto.

In practice, this could include invoices relating to orders, shipments and website views and visits during the relevant time period. If submitting website printouts, it’s essential to show how an order or purchase could be made through the website, or indeed show evidence of actual orders having been made through the website. If claims are made relating to sales and/or turnover figures in affidavits, then evidence must be filed to support these claims.

Essentially, this case is a reminder that no matter how famous a mark may be, there’s never any room for complacency — if the evidence filed does not meet the EUIPO’s requirements, the registration will likely be cancelled.