Game over for Big Mac?

McDonald’s EU trade mark rights in BIG MAC have taken a king hit from Supermac, an Irish restaurant chain. Supermac’s weapon of choice: trade mark revocation proceedings before the European Intellectual Property Office (EUIPO).

What are revocation proceedings?

Revocation proceedings are a common form of attack, and usually take the form of a “non-use challenge”. That is, a claim that the owner of the registered trade mark has failed to genuinely use its trade mark, for the registered goods/services, within a specific time-period.

It is a popular form of challenge because the burden of proof rests with the owner, not the person mounting the challenge. This is because it is easier for an owner to prove it has used its trade mark, than for a third party to prove the opposite (i.e. lack of use by the owner).

In this case, McDonald’s had to prove it had made genuine use of its BIG MAC trade mark in the European Union between 11 April 2012 and 10 April 2017 for:

Class 29: Foods prepared from meat, pork, fish and poultry products, meat sandwiches, fish sandwiches, pork sandwiches, chicken sandwiches, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles, desserts.
Class 30: Edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar.
Class 42: Services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive- through facilities; preparation of carry-out foods; the designing of such restaurants, establishments and facilities for others; construction planning and construction consulting for restaurants for others.

Easy right? Apparently not.

The evidence submitted

McDonald’s submitted three affidavits in defence of its BIG MAC registration, signed by representatives of McDonald’s companies in Germany, France, and the United Kingdom.

The evidence:

claimed significant sales in relation to BIG MAC sandwiches;
attached examples of packaging of sandwich boxes, promotional brochures, advertising posters, and certain menus where the price could be filled in;
extracts from McDonald’s websites in around 18 countries in the European Union; and
extracts from Wikipedia for BIG MAC.

What the evidence failed to say

The problem was not what the evidence did say, but what it did not say – and who it was by.

The evidence provided was solely by interested parties (i.e. McDonald’s personnel). While admissible, the EUIPO Cancellation Division concluded that such evidence must be given “less weight” than independent evidence.

This alone is unlikely to have been enough to jeopardise McDonald’s position but, combined with other perceived evidential weaknesses, the Division concluded that McDonald’s had failed to provide objective evidence that genuine use of the BIG MAC trade mark had been made in the European Union within the relevant time-period.

KEY CRITICISMS OF THE EVIDENCE RAISED BY THE CANCELLATION DIVISION INCLUDED:

the mere presence of a trade mark on a website is insufficient to prove genuine use, unless the website shows the place, time and extent of use (or this information is otherwise provided in evidence);
Wikipedia is not a reliable source of information, as it can be amended by Wikipedia’s users; and
the evidence was silent as to website traffic, orders made through the website, orders made in brick-and-mortar stores, how long products were offered on a given web-page, actual sales, how the brochures were circulated and to who, and whether the promotional materials resulted in potential or actual purchases.

The result

The Cancellation Division found that the evidence failed to prove the BIG MAC trade mark had been put to genuine use in the European Union on any of the registered goods and services. It is a result that has shocked many.

It is certainly a “win” for Supermac, which has apparently been hampered in expanding its business throughout European Union due to the similarity of SUPERMAC with BIG MAC.

Rivals have also latched onto the decision with Burger King promoting “not Big Mac’s” in Sweden. A clever marketing ploy, but one that be viewed as demonstrating BIG MAC still functions as a badge of origin for McDonald’s.

It is also unlikely that this decision is the end of the story.

McDonald’s has indicated an appeal is likely and, even without registered rights in place, it can still look to leverage its reputation to challenge any further expansion of Supermac. Is it likely to succeed? Well that all depends on the evidence.