A Big Mac-tastrophe: the recipe for trade mark revocation

Answer

McDonald's International Property Company, Ltd. (McDonald's) is one of the companies behind the quick-service restaurant chain started in the United States in 1948 by the McDonald brothers. McDonald's now has over 36,000 restaurants in over 100 countries, and holds a considerable number of registered trade marks around the world – it is widely regarded as possessing one of the most well-known and recognisable brands on the planet. One of the registered trade marks owned by McDonald's is a European trade mark numbered 62638 for BIG MAC in Classes 29, 30 and 42 (the mark). 

Supermac's (Holdings) Ltd (Supermac's) is the entity behind the Supermac's fast food restaurant chain, currently operating exclusively in the Republic of Ireland and Northern Ireland, but with ambitions to expand into Europe and Australia. Supermac's operates over 100 outlets, making it the largest Irish-owned quick-serve chain. The name originated from a nickname the restaurant chain founder – Pat McDonagh – was given while playing Gaelic football during his college years.

Revocation action

In April 2017, Supermac's filed a request for revocation of the mark, claiming that BIG MAC had not been put to genuine use in the European Union (EU) in connection with the goods and services in respect of which it is registered within a continuous period of five years. 

Genuine use exists where the mark is used in accordance with its essential function: to guarantee the identity of the origin of the goods for which it is registered. To prove genuine use, actual use of the mark on the market must be shown (ie. there must be evidence of commercial exploitation). 'Token use' of the mark, for the sole purpose of preserving the rights conferred by the mark, will be insufficient, as will solely internal use. 

During the assessment, all the relevant facts and circumstances must be taken into account. The assessment will not necessarily take measure of the commercial success of the mark, but will consider whether the use is warranted in the economic sector concerned to maintain or create a market share for the relevant goods or services. It will be key for the evidence to establish the place, time, extent and nature of use of the mark.

The burden of proof rests with the proprietor of the mark – in this case McDonald's – to prove genuine use, or submit proper reasons for non-use.

The date of registration for the mark was 22 December 1998 and the revocation request was filed on 11 April 2017. As the mark had been registered for more than five years, McDonalds had to show genuine use of the contested goods and services from 11 April 2012 – 10 April 2017 inclusive.

However, if it succeeded in the action, Supermac's sought that the mark be revoked in its entirety with effect from five years following the date of registration (22 December 2003). 

McDonald's response and EUIPO assessment

In response, McDonald's filed its evidence of use in the forms set out below. The Cancellation Division of the EU Intellectual Property Office (EUIPO) assessed the evidence submitted by McDonald's.

1. Three affidavits from McDonald's representatives in Germany, France and the United Kingdom, claiming significant sales in relation to BIG MAC sandwiches, with examples of packaging, promotional brochures and menus.

• Although admissible as proof of use, it was noted that statements made by the interested parties or their employees are given less weight than independent evidence, because the perceptions of the parties involved may be more (or less) affected by a personal stake in the matter.
• The value of evidence of this type depended on whether the contents of the affidavits were supported by other types of evidence.
• No independent evidence was submitted to show how many products packaged as per the examples provided were actually offered for sale or sold.
• The supporting evidence provided did not give sufficient information to support the sales and turnover figures claimed in the affidavits.

2. Brochures and printouts of advertising posters in German, French and English dated between 2011 and 2016 (only some of which contained the price).

• Some of the evidence was not relevant to the period in question.
• The evidence was directed only to some of the member states of the EU.
• No information had been provided about how the brochures were circulated, to whom they were offered and whether they led to any potential or actual purchases.

3. Printouts from a number of websites (the respective McDonald's websites in 18 EU countries) dated between 7 January 2014 and 3 October 2016

• Although some of the printouts bore the mark, it could not be concluded whether, or how, a purchase could be made or an order could be placed and, even if the facility was available, no information was provided to suggest a single order had been placed in this way.
• A connection between the websites and the eventual number of items sold could not be established.

4. A printout from the en.wikipedia.org entry relating to ‘Big Mac’, containing information on its history, content and nutritional values in different countries

• It was noted that Wikipedia entries are not considered a reliable source of information, as they can be amended by users; therefore they can only be relevant if they are supported by other pieces of confirmed independent evidence, which was not the case here.

With reference to evidence originating from the Internet (such as those in categories three and four above), the Cancellation Division remarked that, while the assessment is no stricter than with other forms of evidence, the mere presence of a mark on a website – while indicative of the nature of use and offer of goods/services to the public – is insufficient to prove genuine use without information on the place, time and extent of use (eg. the number of visits the page received, or sales made in the relevant territory over the relevant time period to a certain number of customers through the website). 

Decision

Although the Cancellation Division commented that more limited commercial volume may be offset by extensive, regular use of the mark and vice versa, and that territorial scope is only one of several factors to be taken into account, it concluded that McDonald's had failed to prove the extent of the use of the mark. 

In particular, the Cancellation Division noted that, on the basis of the evidence provided, McDonald's did not provide conclusive information that products bearing the mark are offered for actual sale, as there was no information:

• on transactions concluded, either online or via its physical restaurants;
• on the period for which the products were offered on the identified web page, or in other ways; or
• of any actual sales taking place, or any potential or relevant consumers being engaged, through an offer or a sale.

Accordingly, the evidence McDonald's submitted was not sufficient to establish genuine use of the mark.

Supermac's application was wholly successful. While the Cancellation Division decided to order the revocation of the mark in its entirety, it exercised its discretion to set the effective date of the revocation to 11 April 2017, being the date of Supermac's application. 

What can we learn? 

The Cancellation Division specifically stated: "The methods and means of proving genuine use of a mark are unlimited. The finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but the fact that [McDonald's] chose to restrict the evidence submitted".

This decision serves as a lesson that even giants of their industries cannot rely on their reputation alone; rather, it is a clear reminder that the EUIPO will only allow registrants to rely on the evidence they present.

As such, it appears that the recipe for solid evidence to submit in response to a revocation action  is the meaty evidence of independent parties, topped with data showing real-world commercial presence, and, of course, not forgetting the special sauce: evidence establishing the place, time, extent and nature of use of the mark in the territory during the relevant time frame. 

What happens for McDonald's?

Contrary to reports that all was lost, McDonald's is still the owner of registered EU trade mark protection for the sandwich name. 

Presumably as a protective strategy, McDonald's applied for an EU trade mark for ‘Big Mac’ on 6 October 2017 in Classes 29, 30 and 43. Although the specification in Classes 29 and 30 is narrower than that for which the mark is registered, it still arguably covers the core goods for which McDonald's uses the mark, including "edible sandwiches, meat sandwiches" and "foods prepared from meat". The mark was registered on 11 April 2018, meaning it is not vulnerable to attack for non-use until 11 April 2023. 

Coinciding with the Cancellation Division handing down its decision, McDonald's also launched to European consumers its #StillABigMac campaign, used to promote its limited-edition burger featuring bacon – the first change to the burger's recipe in over 50 years. 

As regards the cancellation of the mark, representatives for McDonald's filed a notice of appeal of the Cancellation Division's decision on 8 March 2019, and the parties have subsequently been engaged in making further submissions for consideration by the next appeal board at the EUIPO. Currently, the mark is still registered "pending cancellation", but no doubt there will be further reports on this tasty topic. 

Rose Smalley is an associate and Amy Galloway is a trainee solicitor in the commercial team at Womble Bond Dickinson.