McDonald's loses EU trade mark ruling over 'Big Mac'

Out-Law News | 16 Jan 2019 | 3:05 pm | 2 min. read

A new ruling in a case involving US fast food giant McDonald's has highlighted the need for brand owners to use the trade marks they register or risk losing their rights in those marks, an intellectual property (IP) law expert has said.

The cancellation division of the EU Intellectual Property Office (EUIPO) ruled late last week to revoke McDonald's EU trade mark for 'Big Mac' after determining that the company had failed to demonstrate its brand had been put to 'genuine use' in respect of the three classes of goods and services which the trade mark covered. Two classes referenced meat sandwiches, among other things, while the third concerned restaurant services.

The EUIPO was ruling on the issue after Irish restaurant business Supermac's challenged the validity of the 'Big Mac' trade mark.

Dublin-based IP law expert Karen Gallagher of Pinsent Masons, the law firm behind Out-Law.com, said: "The EUIPO decision highlights the need for brand owners to 'use it or lose it' when it comes to EU trade marks and equally, that they must carefully consider the evidence they will be required to produce in order to prove genuine use in revocation proceedings."

"EU law requires that evidence of use must establish the place, time, extent and nature of use of the contested trade mark for the goods and/or services for which it is registered. The EUIPO has made it clear that if a brand owner fails to fulfil even one of these conditions, its evidence will be rejected as insufficient," she said.

In its ruling, the EUIPO found that the evidence of use put forward by McDonald's, which consisted of written testimonies, brochures and posters, website links and a printout from Wikipedia, was insufficient to demonstrate the place, time and extent of use in the three classes in which the trade mark was registered. McDonald's produced no evidence of actual sales of products bearing the EU trade mark.

In a statement sent to Out-Law.com, a McDonald's spokesperson confirmed the company intends to appeal against the ruling.

"We are disappointed in the EUIPO’s decision and believe this decision did not take into account the substantial evidence submitted by McDonald’s proving use of our Big Mac mark throughout Europe," the McDonald's statement said. "We intend to appeal the decision and are confident it will be overturned by the EUIPO Board of Appeals.

"Notwithstanding [the] decision, McDonald’s owns full and enforceable trade mark rights for the mark 'Big Mac' throughout Europe," it said.

Gallagher said the ruling provides lessons other brand owners can learn from.

"Brand owners should take heed of the findings of the EUIPO in relation to the sufficiency of the evidence produced by McDonald's," Gallagher said. "Brand owners should ensure that they do not place too much reliance on affidavit evidence from within their own organisation when seeking to prove genuine use. Other evidence will be required to support statements made on affidavit, and ideally, such supporting evidence should come from an independent source."

"It will also be necessary when producing advertising materials and packaging to demonstrate how the materials were distributed and how many of the goods bearing the packaging were actually sold. Likewise, website links alone will be insufficient and should be supported by evidence that the websites have been accessed or that goods have been purchased through these links," she said.

Gallagher said the decision also serves as a warning to brand owners not to "overreach" in terms of the classes of goods and services for which they register their marks. She said they should keep in mind that they may be called on to demonstrate genuine use for all of the goods and/or services for which the trade mark is registered.

Gallagher highlighted the fact that the EUIPO, after assessing McDonald's rights to hold the 'Big Mac' trade mark for restaurant services, found that McDonald's had produced "no single piece of evidence that refers to any of the registered services being offered" under the trade mark.