Too ‘Big’ to Lose? How the EUIPO Sent Big Mac Packing.

Eugene Ee delves into the EUIPO’s reasoning for cancelling the Big Mac mark.

McDonald’s famous “I’m lovin’ it” jingle will have a different ring to it now that the European Union Intellectual Property Office (‘EUIPO’) has decided to revoke the registration of the ‘BIG MAC’ European Union trade mark (‘EUTM’), which is ubiquitous with its flagship burger worldwide. Perhaps the thought of “I’m revokin’ it” was on the officials’ mind when the far-reaching decision in Supermac’s (Holdings) Ltd v McDonald’s International Property Company, Ltd was delivered, which held that McDonald’s had failed to prove genuine use of the EUTM, in relation to both burgers and restaurant services.

Background

The aftermath of this David v. Goliath legal tussle that has reverberated across the food & beverage industry saw Irish fast-food chain, Supermac’s, applying to revoke the EUTM on the basis that it had not been put to genuine use by McDonald’s for a continuous period of five years between 2012 to 2017, a claim which would have seemed outrageous at the time, given the EUTM’s notoriety.

The fast-food giant responded by adducing an extensive body of evidence to prove genuine use of the EUTM. This included affidavits affirmed by its employees in Germany, France and the UK, attesting to significant sales in relation to ‘Big Mac’ burgers, as well as examples of menus, packaging, brochures and printouts from its EU websites, all bearing the EUTM. McDonald’s had also relied on a Wikipedia entry for ‘Big Mac’ to substantiate its case.

Decision

The EUIPO stressed that the evidence of use must establish the place, time, extent and nature of use of the contested EUTM in relation to the goods and/or services for which it is registered. With regard to the extent of use, the EUIPO commented that:

“…all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency”.

Guided by the aforementioned principles, the EUIPO deemed the following evidence adduced by McDonald’s as insufficient to establish the extent of the EUTM’s genuine use:

  • Affidavits: While such evidence was admissible as proof of use, sworn statements provided by interested parties themselves, or their employees, carry less probative value than evidence from independent parties. The probative value of such evidence was thus weighed against other types of evidence, such as labels, packaging or evidence from independent sources.
  • Printouts from websites: The mere presence of the EUTM on the websites per se did not prove genuine use since it was not supported by other information such as the websites’ traffic, the number of orders placed through the websites, or where these websites were accessed from.
  • Packaging materials and brochures: There was insufficient evidence to show how the brochures were circulated, who they were offered to, and whether they had led to any potential or actual purchases.
  • Wikipedia entry on the history of the ‘Big Mac’ burger: This was deemed to be an unreliable source of information as such entry can be edited by Wikipedia users.

“Take-aways” from the Decision

While the EUIPO’s decision is subject to a likely appeal by McDonald’s, it serves as a useful reminder to brand owners that even the most well-known marks that have continuously been in use, may be revoked if substantial evidence to demonstrate the extent of genuine use is not shown. Towards this end, brand owners are reminded to take proactive steps to ensure that they maintain proper records and documentations of use, rather than simply relying on the commercial success of their registered mark to resist a revocation or cancellation action.