IP Insight is a series from Virtuoso Legal, the Intellectual Property Specialists. This case concerns the partial revocation of McDonald’s “Mc” mark on the basis of non-use.
On 31 July 2019, the Cancellation Division took the decision to partially revoke McDonald’s ‘Mc’ word mark.
This process began on 11 April 2017 the Irish Company, Supermac’s filed a request for revocation of McDonald’s ‘Mc’ on the basis of Article 58(1)(a) of the EUTMR. We remind readers that under Art 58(1)(a), a mark can be revoked if it “has not been put to genuine use in connection with the goods or services in respect of which it is registered.”
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Assessment of Genuine Use of “Mc” by McDonald’s
It is important to note that in revocation proceedings the burden of proof lies with the respondent as the applicant cannot prove a negative fact.
Time and Place of Use
Considering Supermac’s application, McDonald’s had to prove genuine use for all the classes for the period 11 April 2012 – 11 April 2017 in the EU. McDonald’s filed 20 annexes with evidence of use in the EU. The evidence submitted by McDonald’s included: affidavits from heads of various McDonald’s European legal departments, menus, printouts, extracts from Annual Reports and surveys.
The Applicant submitted that part of the evidence should not be considered as some documents are undated or the date is outside the relevant period. The EUIPO however held that that “the images of products/product packaging may serve to show how the mark was used in relation to the relevant goods and the internet printouts/screenshots to provide information regarding the type of goods the proprietor manufactures and markets, and therefore cannot be ignored in the evidence’s overall evaluation. In addition, the evidence dated outside the relevant time frame may serve to confirm or assess more accurately the extent to which the mark was used during the relevant period and the EUTM proprietor’s real intentions at the time.”
Where the evidence came from 1991-1992, the EUIPO held that the time frame is too further removed from the relevant period and cannot be accepted.
Extent of Use
The EUIPO Cancellation Division started assessing the extent of use by mentioning that it must first take into account the commercial volume of the overall use, the length of period and the frequency of use.
While the EUIPO accepted some of McDonald’s evidence, it mentioned that in relation to other ‘Mc’ prefixed signs, such as ‘McCroissant’ or ‘McMorning’, the documents submitted were not capable of establishing genuine use.
Nature of Use
The Cancellation Division then assessed the nature of use of the signs which met the aforementioned requirements, which were: ‘McDonald’s’, ‘BIG MAC’, ‘McRIB’, ‘McMUFFIN’, ‘McTOAST’, ‘McFISH’, ‘McWRAP’, ‘McNUGGETS’, ‘McCHICKEN’ and ‘McFLURRY’.
The Cancellation Division firstly stated that “there is no evidence of use of the contested EUTM alone, but only accompanied by further elements.” The Division held that in some cases, such as ‘McDonald’s’ or ‘Big MAC’, the use of the sign cannot be considered to be an acceptable variation of the mark. However, the use of the sign in relation to ‘McMUFFIN’ or ‘McFISH’ was held to be acceptable as the elements added describe characteristics of the product.
Analysing the classes for which the trade mark was registered, the Cancellation Division held that “proprietor has not proven genuine use of the EUTM for some of the registered goods in Classes 29 and 30 and for all the registered goods and services in Classes 32 and 43, for which it must, therefore, be revoked.”
McDonald’s managed to prove genuine use for other contested goods in Classes 29 and 30 (such as “chicken nugget” style products) and therefore, the mark was only partially revoked.
When registering a mark, a company must carefully define its specification.
Specification must always consider the possibility revocation for non-use and be sufficiently narrow, clearly applying to the products/services genuinely used.
In such cases, IP Specialists can tailor specifications, advise on genuine usage, and, should circumstances dictate, curate sufficient evidence to defend revocation.
Failure to instruct the requisite expertise risks the value of such trade marks, and the business that is predicated upon them. For