What you need to know
- McDonald's EU trade mark (EUTM) "BIG MAC" was recently revoked for not being put to genuine use in the EU.
- McDonald's failed to discharge its evidentiary burden for showing genuine use, which requires proof of the specific places, times, extent and nature of use of the trade mark in the EU.
What you need to do
- Consider the risk of your existing trade marks being subject to a non-use application by a third party.
- When defending any non-use application, you should collect and file detailed and specific evidence of use.
Introduction
In January 2019, the European Union Intellectual Property Office (EUIPO) revoked its registration of McDonald's iconic "BIG MAC" trade mark for non-use. The case is part of a highly publicised dispute between fast-food giant McDonald's and Irish fast-food restaurant, Supermac's.
Supermac's takes a bite out of "BIG MAC"
An EUTM is registered in the EU and enforceable across all Member States. EUTMs are administered by the EUIPO.
Article 58(1) of the EU Trade Mark Regulation (EUTMR) allows an application to be made to the EUIPO for revocation of a trade mark if, within a continuous period of 5 years:
- the trade mark has not been put to genuine use in the EU in connection with the goods or services for which it was registered; and
- there are no proper reasons for non-use.
In April 2017, Supermac's applied to have the McDonald's trade mark revoked so that Supermac's could expand its franchise within the EU.
Supermac's argued the "BIG MAC" trade mark was not put to genuine use during a continuous period of 5 years after it was registered in April 2012. McDonald's, as the registered trade mark owner, bore the burden of defending Supermac's application and proving genuine use.
What is genuine use?
The EUIPO held that genuine use of a trade mark exists when the mark is used in accordance with its essential function as a badge of origin. Genuine use requires the trade mark to be actually used in the market and does not include token uses for the purpose of preserving rights in the mark.
How did McDonald's attempt to prove genuine use?
To prove genuine use of "BIG MAC" McDonald's submitted:
- three affidavits signed by company representatives in Germany, France and the UK claiming significant sales figures in relation to Big Macs between 2011 and 2016;
- brochures, printouts and advertising posters of Big Macs; and
- printouts from McDonald's websites in the EU and the Big Mac Wikipedia page.
The EUIPO found that McDonald's evidence was insufficient to establish genuine use of the trade mark for two key reasons.
First, the affidavit evidence did not carry enough probative value as the affidavits were provided by employees, rather than independent third parties.
Secondly, the evidence, while targeting the relevant time period and referring to EU Member States, failed to address sufficiently the extent to which the mark was used. The EUIPO considered that all relevant facts and circumstances must be taken into account when establishing the extent of use, including:
- the nature of the relevant goods or services for which the trade mark is registered;
- the characteristics of the market concerned;
- the territorial extent of the use; and
- its commercial volume, duration and frequency.
The EUIPO took issue with the brochures, posters and printouts of the websites McDonald's provided because they did not offer any meaningful information (aside from the existence of the mark). For example, there was no information about how frequently the websites were visited and the amount of Big Mac orders made from them, or how the brochures and marketing materials were circulated to consumers and to what degree those materials led to purchases of Big Macs.
Lessons learned
The EUIPO's decision is a reminder that proving genuine use of trade marks requires detailed evidence about the extent to which the mark has been used. A similar non-use application scheme applies for Australian registered trade marks under the Trade Marks Act 1995 (Cth).
McDonald's has appealed the EUIPO's decision.
Authors: Stuart D'Aloisio, Partner; and Dario Aloe, Lawyer.
