McDonald's gets bite taken out of trade mark portfolio

Industrials Intellectual Property Patents & Trade Marks

In brief

The European Union Intellectual Property Office recently revoked the McDonald's 'BIG MAC' trade mark. Associate Emma Gorrie and Summer Clerk Spiro Kalavritinos detail how one of the world's most well-known brands suffered this blow in relation to its namesake product.

Meal prep

Irish burger chain Supermac's (Holdings) Ltd filed a request for revocation of the European trade mark registration for 'BIG MAC', directed against all goods and services covered by the specification. The request was on the grounds that the trade mark had not been put to 'genuine use' under Article 58(1)(a) of the European Union Trade Mark Regulation.

Genuine use exists where a trade mark owner has used the mark to signify the origin of goods and services for which the trade mark is registered. The burden of proof was on McDonald's to show it had used the trade mark, as it is a tall order to ask a revocation applicant to prove a negative (ie that McDonald's had not used the trade mark). In short, to successfully defend the application, McDonald's had to prove it had marketed sandwiches under the name BIG MAC.

McDonald's claimed that not only had the trade mark been used in advertising and on the packaging of its goods, but that millions of products had been sold under the trade mark.

In support of its claims, McDonald's submitted evidence showing use of the trade mark, including affidavits signed by representatives of McDonald's companies, brochures and printouts of advertising posters and packaging for sandwiches, printouts from its websites and a printout from Wikipedia on the history of the 'Big Mac'.

Order up!

The Cancellation Division of the European Intellectual Property Office ruled that McDonald's did not prove genuine use of the trade mark. Under the European Union Trade Mark Delegated Regulation, evidence of use must establish the place, time, extent and nature of use of the contested trade mark. These factors are cumulative, such that evidence must sufficiently cover all of these factors in order to prove genuine use. McDonald's was found to have failed to establish extent of use in its evidence.

Evidence needed beefing up

The Cancellation Division found that the evidence was missing some key ingredients, identifying the following issues:

  • Affidavits: statements by interested parties are admissible, but have less probative value than independent evidence. As such, the statements in the affidavits regarding factors like sales of the 'Big Mac' had to be analysed with reference to the other evidence.
  • Brochures, posters and packaging: there was no information about how the brochures and posters were circulated, who they were offered to and whether they led to any purchases. In relation to the packaging, there was no independent evidence showing the number of products for which the packaging was made were actually offered for sale or sold. The materials did not give any data for the real commercial presence of the trade mark.
  • Printouts from websites: the mere presence of a trade mark on a website is insufficient to prove genuine use. The place, time and extent of use must also be displayed on the website or be provided elsewhere. The evidence failed to establish whether the website had been visited (internet traffic and hits), what countries the website had been visited from, and whether orders could be, or had been, made through the website.
  • Printout from Wikipedia: due to its ability to be amended by any user, the information was not considered to be a reliable source of information unless supported by other independent evidence.

Key takeaway

Even a trade mark for something as iconic as the Big Mac can be vulnerable to challenge. No amount of reputation can overcome the need to satisfy technical evidential requirements. However, all is not necessarily lost for McDonald's. It has the opportunity to appeal, and has indicated it will do so. In addition, the BIG MAC mark was just one of many in the McDonald's trade mark portfolio (including another for 'Big Mac' in an uncapitalised form).