‘Big Mac’ dispute provides lessons for businesses on using trade marks

Dublin-based expert in resolving intellectual property disputes, Maureen Daly of Pinsent Masons, and London-based colleague Matthew Harris, a trade mark attorney, were commenting after Irish fast-food chain Supermac’s was partially successful in challenging McDonald’s EU trade mark rights for ‘Big Mac’.

The ‘Big Mac’ brand is arguably one the most iconic brands in the world. It has been associated with McDonald’s for decades – in the EU, it was registered by the company as a trade mark in 1996.

In 2017, however, Supermac’s called on the EU Intellectual Property Office (EUIPO) to revoke the trade mark, arguing that it had not been put to ‘genuine use’ in the EU in connection with the goods and services for which it had been registered on a continuous basis over a five year period spanning from 11 April 2012 to 10 April 2017.

The EUIPO initially agreed with Supermac’s arguments, determining that the ‘Big Mac’ trade mark should be revoked across the full range of goods and services for which it had been registered, under three separate classes of the International Classification of Goods and Services for the Purpose of the Registration of Marks (Nice Classification) – an international classification system for trade mark applications.

McDonald appealed, however, and the EUIPO’s Board of Appeal annulled the earlier decision. At the same time, the Board of Appeal determined that the scope of the ‘Big Mac’ trade mark should cover a narrower range of goods and services than previously. It still applied to foods prepared from meat and poultry products, meat sandwiches, and chicken sandwiches, under Nice class 29; edible sandwiches, meat sandwiches, and chicken sandwiches, under Nice class 30; and services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities – and preparation of carry-out foods – under Nice class 42.

Supermac’s challenged the Board of Appeal’s decision before the EU General Court, seeking to revoke McDonald’s ‘Big Mac’ EU trade mark rights for all but ‘meat sandwiches’, under Nice class 30.

The General Court refused to go that far, but it determined that McDonald’s had failed to prove genuine use of its ‘Big Mac’ trade mark for ‘chicken sandwiches’, ‘foods prepared from poultry products’ and the ‘services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods’.

In reaching its decision, the General Court considered evidence McDonald’s had shared with the EUIPO purporting to demonstrate genuine use of the ‘Big Mac’ mark in the EU market during the relevant period. The evidence included advertising posters, menu boards and sales figures, as well as published articles, screenshots of TV commercials, and website analytics. The General Court identified problems with some of the evidence, however it considered, for example, that the evidence was not sufficient to establish there had been ‘genuine use’ of the trade mark in respect of ‘chicken sandwiches’, and that the evidence presented in respect of the range of services the mark applied to did not refer to the services concerned.

Maureen Daly said: “It is well-established by case law that ‘genuine use’ of a trade mark must be demonstrated by solid evidence of actual and sufficient use of the trade mark on the market concerned. Probabilities and presumptions do not play any part in that assessment.”

“The judgment is a timely reminder of the importance of supplying sufficient and suitable evidence when defending a mark against a non-use revocation challenge. Nothing should be taken for granted by a brand owner, no matter how well-known their trade mark is,” she said.

Matthew Harris added: “This is a huge wake-up call – owners of well-known trade marks cannot simply rest on the premise ‘it is obvious the public know the brand and we have been using it’. The case highlights that even global renowned brands are held to the same scrutiny when having to evidence genuine use of a trade mark in a given territory. The evidence needs to show the trade mark being continuously used in the five-year period in relation to all of the registered goods/services or you risk losing it when you cannot evidence genuine use.”