McDonald’s’ “BIG MAC” trade mark is one of the most well-known trade marks in the world. Despite its global reputation, the mark was partly revoked in a recent decision, following the revocation action of competitors, Supermac’s Ltd.
Background to the dispute
It is a David versus Goliath story: the Irish fast-food chain, Supermac’s, challenged McDonald’s’ trade mark rights for its EU trade mark “BIG MAC”. In 2017, Supermac’s filed an application for revocation with EUIPO in respect of the EU trade mark which has been registered since 1996. Supermac’s argued that the trade mark had not been put to genuine use in the EU over the past 5 years spanning from 11 April 2012 to 10 April 2017.
There is a basic principle in trade mark law: a trade mark should be used for the goods and services covered by the registration, as otherwise the validity can be attacked by a third party, resulting in the trade mark owner needing to prove genuine use of the mark.
The decision of the EUIPO
While this may sound like a hopeless endeavour; it was initially successful. As we previously reported, The EUIPO annulled the trade mark for all contested goods and services on the basis that McDonald’s failed to provide sufficient evidence for the extent of the use of the mark, and that meat burgers and sandwiches under the name “BIG MAC” had been sold. Statements by board members, adverts, and the reference to the Wikipedia entry on the “BIG MAC” were not sufficient for the EUIPO.
However, McDonald’s lodged an appeal against the decision and submitted additional evidence for the sale of various products under the name “BIG MAC”, including advertising material, consumer surveys, Google Analytics Data, and a financial audit report. The Board of Appeal partly overturned the decision of the Cancellation Division in 2022. The EUIPO was convinced that McDonald’s does in fact use the “BIG MAC” trade mark – not only for beef burgers, but also for “meals made from poultry products” and as a name for restaurant services.
Referral to the EU General Court
Supermac’s took the case further to the EU General Court, seeking to revoke McDonald’s “BIG MAC” EU trade mark rights for all but “meat sandwiches”.
The General Court decided that McDonald’s still has the exclusive right to sell beef burgers under the name “BIG MAC”, which is protected as an EU trade mark. But for poultry burgers and for restaurant services, McDonald’s will lose the EU trade mark protection for “BIG MAC”.
Against the view of the EUIPO, the General Court found that the evidence submitted to prove genuine use for poultry burgers and restaurant services was not sufficient.
In regard to “chicken sandwiches”, McDonald’s submitted advertising posters, screenshots from a television commercial and content from its French Facebook page during the relevant period. However, whilst the evidence demonstrated use of BIG MAC on chicken sandwiches, it did not demonstrate the quantities, regularity, and recurrence of the distribution of the goods concerned, or the prices at which the goods were marketed. The date on which the advertising posters were disseminated to the public, nor the date on which the goods at issue were marketed was not clear from the advertising posters. The evidence therefore did not provide sufficient indication of the extent of use of the mark in connection with the goods.
Similarly, McDonald’s did not submit evidence showing use of the trade mark in relation to “services rendered or associated with operating restaurants”. The evidence provided (surveys, brochures, photographs of menus etc.), only showed use in connection with meat sandwiches, which was not sufficient to show use for the services.
Moving forward
While this may be seen as a win for Supermac’s and other competitors, the risk of infringement remains when using “BIG MAC”. The revocation does not grant permission for restaurants to sell products such as chicken burgers under the name “BIG MAC”.
What should trade mark owners keep in mind?
No matter how famous a brand may be, this case shows that any mark can be vulnerable to revocation for non-use. It is crucial for trade mark owners to keep their marks in use and to keep evidence to demonstrate genuine use of the trade mark. It should also be noted that a trade mark can be challenged decades after registration, and records showing use of the trade mark should be kept, even if use of the mark has ceased. The indications and evidence of use must be specific and establish the place, time, extent and nature of use of the trademark for the goods and/or services for which it is registered.
If you have any questions about how to protect your trade marks, please contact our trade mark team.
