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McDonald’s sees its ‘BIG MAC’ EU trade mark rights curtailed as the courts continue to crack down on evidence of trade mark use
The decision
In a decision dated 5 June 2024, the EU’s General Court held that fast food giant McDonald’s had failed to prove genuine use of its BIG MAC trade mark in respect of various goods and services, including poultry products and the operation of restaurants.
In the EU, it is a requirement that trade marks be put to commercial use in respect of their registered goods and services within five years from grant of registration, else they are liable to revocation. Therefore, barring further appeal, McDonald’s will see its EU trade mark registration partially revoked such that it will only cover a “meat sandwich” product.
Background
The decision is the latest in a series of skirmishes between McDonald’s and the Irish fast food chain Supermac’s, relating to the latter’s plans to expand its business into the wider EU. After seeing its expansion plans blocked by McDonald’s, Supermac’s attempted to clear the path by challenging McDonald’s to file proof of use of the BIG MAC trade mark across the EU for all registered goods and services.
Prior to this latest decision, the EU Intellectual Property Office’s Board of Appeal (“BoA”) had held that McDonald’s had successfully proven use of the BIG MAC mark in respect of some of the registered goods and services. However, following an appeal by Supermac’s, the General Court took a more critical view of McDonald’s evidence and consequently overturned much of the BoA’s decision.
The Court’s reasoning
Whilst there was no question that BIG MAC had been used as the name of McDonald’s signature beef burger, a type of “meat sandwich”, evidence for other goods and services of the registration ranged from rather less robust to wholly absent.
In particular, in respect of the goods “chicken sandwiches” and “foods prepared from poultry products”, McDonald’s evidence comprised solely of print-outs and screenshots of advertising materials supposedly made available in France in 2016. These contained references to a limited-edition chicken BIG MAC burger.
The General Court concluded that whilst those materials did show the mark in question in connection with relevant goods, this alone did not suffice to establish that there had been “real” commercial use of the mark. More specifically, the evidence did not “make it possible to ascertain in what quantities, or with what regularity and recurrence, the goods concerned were distributed.”
As to the services of the registration, the General Court held that there was no relevant evidence whatsoever to support that McDonald’s had operated restaurant services under the BIG MAC trade mark. Whilst the BoA had been prepared to find that there was use on the basis that the McDonald’s business in general had a reputation for operating restaurants, and the evidence showed that BIG MAC is the name of the business’ “flagship” meat sandwich product, the General Court criticised this approach as bad law. Evidence of use of a mark in relation to goods cannot be relied on to infer use in relation to services in this way.
What does this mean for brand owners?
This case serves as a reminder that the evidential burden of EU trade mark use is not to be underestimated. Whilst the threshold is low in the sense that the brand need not be highly commercially successful, the devil is in the detail; the evidence must clearly indicate where, when, to what extent and how the mark has been used, in respect of each of the relevant goods and services. In the absence of any one of these indications, a registration is liable to revocation for any of the goods or services where there is insufficient evidence, even if it is putatively a well-known mark.
If you have any queries regarding this topic and would like assistance on your IP strategy, please contact Suzanne Power and Ian Gill of our team.
Category: News | Author: Suzanne Power | Published: | Read more
