In a recent decision, McDonald’s European Union trademark registration for BIG MAC has been successfully revoked by an Irish burger chain Supermac’s. The two fast-food chains had been locked in a trademark dispute for a number of years over the use of the word “mac”.
This is a surprising decision given that McDonald’s Big Mac is one of the most well-known menu items sold by McDonald’s across the world. The decision made by the European Union Intellectual Property Office (EUIPO) does not stop McDonald’s selling Big Mac’s but if the EUIPO’s decision is upheld, it may help open the door for Supermac’s to expand into the EU.
Once a UK or EU trade mark has been registered for at least five years, it is possible for a third party to apply to revoke the trade mark if it has not been used in relation to the goods and services which it covers.
Supermac’s applied to cancel McDonald’s EU trademark registration for BIG MAC and McDonald’s was required to submit evidence that it has used this brand, in the EU, between April 2012 and April 2017.
In support of its registration, McDonald’s submitted statements signed by McDonald’s representatives in the UK, France and Germany; brochures and printouts of advertising materials; printouts from its own website and even a printout from Wikipedia! The statements contained some sales figures showing that McDonald’s had sold over 1.4 billion Big Macs in the UK, France and Germany between 2011 and 2016.
However, the EUIPO felt that the evidence was not sufficient to show that the trade mark had been put to genuine use. The EUIPO also held that the evidence submitted by MacDonald’s, in particular the statements signed by its representatives in the UK, France and Germany, was of only limited value. As such, the EUIPO ruled that “the evidence is insufficient to establish genuine use of the trademark” on Big Macs by McDonald’s across the EU.
With McDonald’s Big Mac being such a global product, it is surprising that the evidence produced by McDonald’s was not more robust. In particular, McDonald’s may have been in a better position had it provided data and images showing the Big Mac for sale in its restaurants.
This case is an important reminder to brand owners, both big and small, of the importance of obtaining comprehensive records of brand use, so that specific and objective evidence can be provided if a third party objects to the use of a particular intellectual property right.
Since the EUIPO’s decision, Supermac’s has issued a statement saying, “this is a great victory for business in general and stops bigger companies from ‘trademark bullying’ by not allowing them to hoard trademarks without using them”. McDonald’s has also issued a statement confirming that it will appeal the EUIPO’s decision so keep your eyes peeled for that.
Our specialist intellectual property solicitors regularly advise clients on trademark and other intellectual property issues. If you need advice on any aspect of intellectual property, please contact a member of the intellectual property team today.