This article first appeared on CITMA.
How did Irish burger chain Supermac’s manage to get the Big Mac trade mark cancelled across the EU? The answer lies in the lack of evidence presented by McDonald’s as Daniel Bailey explains.
These past few weeks have seen McDonald’s receive a lot of, perhaps unwanted, publicity.
On the other side of the pond, the Clemson Tiger college football team celebrated winning the national championships by making their way through 1000 ‘hamberders’ in the White House, describing the meal as “the best meal we ever had” (this claim that has since been denied).
A little closer to home, McDonald’s European Union trade mark registration for BIG MAC (No. 62638) was successfully revoked by an Irish burger chain, Supermac’s.
The two fast-food chains have been locked in a trade mark disputes for a number of years over the use of the term ‘mac’.
On face value, this is a surprising decision. The Big Mac is one of the most well-known menu items in the world, sold by the world’s largest fast food chain. The Big Mac is so widely available globally, and the brand is so well known, that The Economist uses the cost of Big Macs worldwide to compare prices and exchange rates between different countries.
This does not stop McDonald’s selling Big Macs, but it if it is upheld it may help open the door for Supermac’s to expand into the EU.
How is this possible?
Once a UK or EU trade mark has been registered for at least five years, it is possible for a third party to apply to revoke the trade mark if it has not been used in relation to the goods and services which it covers.
Supermac’s applied to cancel McDonald’s EUTM registration for BIG MAC and McDonald’s was required to submit evidence that it has used this brand, in the EU, between April 2012 and April 2017. Easy, or so it would seem.
The evidence and decision
In support of its registration, McDonald’s submitted statements signed by representatives of McDonald’s in the UK, France and Germany; brochures and printouts of advertising materials; printouts from their own websites; and a print out from Wikipedia.
The statements contained some sales figures showing that McDonald’s sold over 1.4 billion Big Macs in the UK, France and Germany between 2011-2016.
The EUIPO felt the evidence was not sufficient to show that the trade mark had been put to genuine use. The type of evidence submitted, in particular the statements submitted by representatives of McDonald’s, was of only limited value.
As such, EUIPO concluded that the evidence did not provide sufficient details concerning the extent of use and the materials “do not give any data for the real commercial presence of the EUTM for any of the relevant goods or services”.
How to protect yourself
With Big Mac being so ubiquitous, it is surprising that the evidence submitted in this case was not more robust.
In particular, McDonald’s would have been in a better position if it had provided objective data and images showing the products for sale in its restaurants.
This case is a stark reminder to brand owners, both big and small, of the importance of maintaining comprehensive records of brand use, so that they can provide specific and objective evidence.
Chartered Trade Mark Attorneys are best placed to advice on how to prove use of a trade mark.
Supermac’s has since issued a statement “this is a great victory for business in general and stops bigger companies from ‘trademark bullying’ by not allowing them to hoard trade marks without using them”.
This commenter struggles to agree with this statement. The Big Mac is one of the world’s most famous menu items and, despite this decision; McDonald’s is clearly using the Big Mac trade mark.
McDonald’s has wasted no time confirming it will appeal this decision.
The above leaves the door open for more publicity for McDonald’s in particular, will the appeal be allowed and secondly, what how many ‘hamberders’ can the winners of the 2019 Super Bowl eat.
Keep an eye open for the appeal.