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This article was first published in the November 2024 issue of CITMA Review, the journal of the Chartered Institute of Trade Mark Attorneys (CITMA). For more information on CITMA, please visit citma.org.uk
On 5th June 2024, the EU’s General Court (GC) issued its judgment in the appeal brought by Supermac’s (Holdings) Ltd against the Board of Appeal (BoA) decision of 14th December 2022.1
After the Cancellation Division initially revoked, in its entirety, McDonald’s’ EU trade mark (EUTM) No. 62638 for the mark BIG MAC on the grounds of non-use under Article 51(1)(a) of Council Regulation (EC) No. 207/2009 as amended, the BoA’s somewhat generous decision had then maintained the EUTM for the following:
The latest GC decision partially upholds Supermac’s’ appeal, with the result that the EUTM is revoked for everything except “foods prepared from meat products, meat sandwiches” in class 29 and “edible sandwiches, meat sandwiches” in class 30.
This case gives practitioners a number of things to consider. In particular, it is a reminder that evidence will be carefully scrutinised in non-use proceedings and that use on goods cannot be inferred as use on services. It also reiterates the practical benefits of filing for terms broader than your specific activity.
Use of the BIG MAC trade mark on “meat sandwiches” in class 30 was not in dispute. When it came, however, to the more specific “chicken sandwiches” and “foods prepared from poultry products”, the McDonald’s evidence dated between 2015 and 2016, comprising print-outs of advertising posters, menu boards, screenshots of TV adverts and Facebook posts that referred to the Grand Big Mac Chicken product, was found to be insufficient to establish the real commercial extent of use of the mark.
These findings reinforce to brand owners the importance of being in a position to present material that shows not only the use of their mark in external promotion, but also the commercial scope of that use. There is no requirement for trade mark use to be on an intensive, continuous and significant scale for it to be genuine. However, it is vital to be able to demonstrate indications such as the quantity of products under the mark that were distributed and sold as well as the frequency, regularity and duration of such sales and distribution.
McDonald’s had submitted sales and Google Analytics data. However, this information was held to be too general and not broken down adequately to assist in respect of the specific goods “chicken sandwiches” and “foods prepared from poultry products”.
Where a trade mark owner may offer a number of different products under a brand, any data that demonstrates the commercial reach of those products needs to be sufficiently granular to provide separate information for those individual products.
Supermac’s’ appeal disputed the BoA’s finding that “meat sandwiches” belonged to the category “foods prepared from meat products”, a finding that meant that use on the former was use on the latter. However, citing established EU case law, in particular the judgment of 13th February 2007 in Mundipharma v OHIM – Altana Pharma (RESPICUR), regarding the existence of sub-categories within specification terms, the GC agreed with the BoA on this point.2
What is relevant to identifying sub-categories, the GC outlines, is not the nature of the product but its intended use, since that is what drives consumers’ selection of products. “Meat sandwiches” are not a distinct sub-category of “foods prepared from meat products” as both are meat-based and intended to meet specific nutritional needs.
In its assessment, the GC acknowledged that the category “foods prepared from meat products” contains goods that “vary greatly” in consistency, referring to stock, stuffing and meatballs as examples. One might think it arguable that those products have differing purposes and fulfil distinct user requirements – stock and stuffing are not normally consumed in the form in which they are purchased, as meatballs and sandwiches are.
Nevertheless, this assessment favours the interests of trade mark owners. The GC decision in BIG MAC confirms that trade mark owners cannot be expected to use a mark on every commercial variation of a product. Therefore, when drafting specifications, it is certainly worth bearing the sub-category principle in mind. Ensuring terms in a specification are not focused on the specific activity of an applicant, but define that activity based on its broader purpose, will likely provide more useable and flexible rights further down the line.
The BoA had found that the profile held by the BIG MAC burger, combined with the reputation of McDonald’s’ restaurant services, meant use of the EUTM was established for class 42. The GC disagreed.
Referring to the evidence submitted, the GC considered that none of that material referred to services. McDonald’s’ reliance on the approach adopted in the decision of 13th May 2009 in Schuhpark Fascies v OHIM – Leder & Schuh (jello SCHUHPARK) was dismissed.3 The fact that a BIG MAC burger might be the “flagship” product of McDonald’s restaurants and sold exclusively in them does not give rise to a “link” in the mind of consumers between the BIG MAC mark and services relating to restaurants.
Although the BIG MAC EUTM has seen a large swathe of its specification deleted, including “chicken sandwiches”, in some areas the impact on the scope of McDonald’s’ rights is in practice negligible. The retained meat products clearly encompass a wide range of goods broader than burgers – including the deleted “foods prepared from poultry products” and “chicken sandwiches”.
Further, the GC’s finding that reputation of one mark (in this case MCDONALD’S) has no impact on the scale of use of another (here, BIG MAC) feels sensible. Had the GC agreed with the BoA here, this would have been contrary to many fundamental principles of EU trade mark law and could in effect overly broaden a trade mark proprietor’s rights.
1 McDonald’s International Property Company, Ltd v Supermac’s (Holdings) Ltd, R 543/2019-4
2 T-256/04
3 T-183/08
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Category: Latest Insights | Author: Louise Foster | Published: | Read more
