The owner of Supermac fast food restaurants, an Irish chain, has successfully challenged McDonald’s European trade mark registration for BIG MAC on grounds of non-use. The EU Intellectual Property Office (EUIPO) decided that McDonalds had not proved that the registration had been put to genuine use in the EU.
The BIG MAC European trade mark had been registered since 1996 in relation to foodstuffs including sandwiches in classes 29 and 30 and restaurant services in class 42. McDonalds filed evidence of use of its mark from 2012 to 2017 by means of three affidavits by the company’s employees and legal counsel in Germany, France and the United Kingdom respectively. These affidavits contained an indication of BIG MAC sales figures for the relevant years, samples of packaging (branded boxes in which the burgers were sold), promotional materials, point of sale materials and menus; all bearing the mark BIG MAC. McDonalds also provided in its evidence printouts of pages from their websites in most of the European Union member states, which showed the BIG MAC mark, as well as an extract from Wikipedia which provided information about the history of the BIG MAC burger and its related advertising, a description of the product and its nutritional values.
The EUIPO decided that this evidence was not sufficient to prove that McDonalds had made genuine use of BIG MAC in the relevant period of time on burgers. Specifically, the Office held that the evidence filed did not prove sales of the BIG MAC burgers since most materials did not indicate a retail price and there were no invoices or receipts of sales. The Office was also critical of the examples of marketing material provided (on the basis that there was no information as to how these had been distributed) and the extracts from the McDonald’s websites (on the basis that there was no information as to how many visitors to these websites there had been or whether any had entered commercial transactions through these sites). Overall, the EUIPO concluded that McDonald’s had not proved the “extent” of its alleged use of the BIG MAC mark.
The EUIPO traditionally has given less weight to affidavits and statements issued by trade mark owners, rather than third parties, particularly if a trade mark owner’s statement is not backed up by supporting documentation. This is just another example of that approach to evidence analysis. In this case, it appears that a significant amount of the evidence provided by McDonalds was from its internal records and there was insufficient detail as to how widespread its marketing had been and the consumer impact its website had had and insufficient documentation to support the purported sales figures. It is also notable that the Office was dismissive of the Wikipedia extract on the basis that it was not a reliable source of information.
Unsurprisingly McDonalds have announced that they will appeal this decision and they may be able to persuade the Office to accept additional evidence on appeal to bolster its case. Nevertheless, this looks like a significant win for the Irish food chain against its much larger opponent. For any new entrants to this market, though, it should be noted that McDonalds now has a second much more recent (and not yet vulnerable to non-use cancellation) European registration for BIG MAC, dating from 2018.
This case shows how the evidential requirements for maintaining a registered mark before the EUIPO are burdensome for all trade mark owners, big or small. It stresses how important it is for trade mark owners to try to keep examples of all uses of their marks including: records of any advertising undertaken (and any relevant data about distribution of this content), website material as well as data supporting how many customers have visited these sites, articles produced by third parties in the press or trade press, details of any awards won and exhibitions/conferences attended and, above all , invoices, receipts or purchase orders (at least for the past five years), since these supporting documents are the absolute favourite means of evidence for the EU examiner in proving sales under a mark!
By Isabel Moya