McDonalds will have to chew on this decision for a long time: With the decision 14 788 C of January 11, 2019, the EUIPO deleted the mark „BIG MAC“ due to lack of proof of use to the extent claimed.

How could that happen?

McDonalds is – or better was – the holder of the European Union trademark 000 062 638 from 1996, registered for classes 29, 30 and 42, claiming not only specific food products and sandwiches, but also services related to the operation and franchising of restaurants

The Irish fast-food chain Supermac’s had sued the brand, accusing McDonalds of preventing their expansion into the EU with brands such as „Big Mac.“
In fact, McDonald’s has shown little restraint in pursuing its trademark rights, from a dentist in New York who wanted to call his practice McDental to an attempt by a Singapore company to register the Maccoffe brand in the EU. Only the fight against „McCurry“ in Malaysia was lost.

Supermac filed an application under Article 58(1)(a) of the EU Trade Mark Regulation, requesting the revocation – in its entirety – of ‚BIG MAC‘, on grounds that the mark would not have been put to genuine use for a continuous period of 5 years.
In response to the application, McDonald’s submitted evidence that ‚BIC MAC‘ would be in use in a number of Member States, including in advertising and on the packaging of relevant products.

The applicant noted that the evidence submitted by McDonald’s would prove genuine use for sandwiches, but not also in relation to the other goods and services for which the registration was obtained. As such, the application was to be upheld.
McDonald’s replied noting that the mark was genuinely used in Germany, France, and the UK, and that this would prove genuine use in the EU. Furthermore, use of ‚BIG MAC‘ in relation to sandwiches would also mean use of the trademark in relation to its ingredients.

Although McDonald’s provided various affidavits signed by McDonald’s representatives detailing sales figures for the period 2011-2016; brochures and printouts of advertising posters, dated between 2011 and 2016; printouts from a number of McDonald’s websites, dated between 7/1/2014 and 3/10/2016; and also a printout from a Wikipedia entry (in English) providing information on McDonald’s Big Mac, the Cancelation Division found these evidences not convincing. The division concluded:
„Even if the goods were offered for sale, there is no data about how long the products were offered on the given web page or in other ways and there is no information of any actual sales taking place or any potential and relevant consumers being engaged, either through an offer or through sale. Finally, as far as the relevant services are considered, there is no single piece of evidence that refers to any of the registered services being offered under the EUTM.

It follows that an overall assessment of the evidence does not allow the conclusion, without resorting to probabilities and presumptions, that the mark was genuinely used during the relevant period for the relevant goods or services.

Considering the high level of awareness of „Big Mac“ for particularly lusciously designed hamburger, the decision may be surprising at first glance. In fact, it is only consistent, because if the brand is to be fully defended, its brand use must be proven not only for parts but for the entire claimed list of goods and services. McDonald’s has just failed to show that „Big Mac“ was also used for class 42, i.e. for operating restaurants. This is a typical case in which an important mark is to be protected for the widest possible number of goods and services, without the applicant worrying that the mark will be ready for erasure without appropriate use after the end of the grace period.

It remains to be seen how McDonald’s will respond to this decision. However, it is more than likely that a limitation in the class and in the list of goods has a good chance of ensuring the restoration of trademark rights, even if only to a limited extent.

The view that now every little hamburger roasting in the future may call their product „Big Mac“ seems premature.

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