The Importance of Evidence: McDonald's fails to put sufficient meat on the bone to defend its 'BIG MAC' trade mark

Whilst the ‘BIG MAC’ name may be recognisable to many, the EU Intellectual Property Office (“EUIPO”) has last week cancelled it as a trade mark on the grounds that McDonald’s did not submit sufficient evidence of use of the name within the EU.

Background

Obtaining protection for brand names by registering them as trade marks is a critical tool in enabling companies to prevent third party competitors from using confusingly similar branding.  Importantly, once a trade mark is registered, there is a requirement on the owner of that trade mark to use it in order to prevent it from becoming vulnerable to cancellation by a third party.  In brief, if an EU trade mark is not used in the EU for a period of five years or more following its registration, and there are no justifiable reasons for it not being used, it is vulnerable to cancellation.

In the present case, McDonald’s had protected the term ‘BIG MAC’ as an EU trade mark which registered on 22 December 1998.  The trade mark covered goods and services including foods prepared from meat, edible sandwiches and franchising and restaurant services.

An Irish-based company, Supermac’s (Holdings) Limited, applied to cancel McDonald’s trade mark registration in April 2017 on the ground that the mark ‘BIG MAC’ had not been put to genuine use within the EU in respect of all of the goods and services covered.

In such cancellation actions, the onus is on the owner of the trade mark registration to prove, with evidence, that the trade mark has been used in the EU within the appropriate timeframe.

The Decision

The EUIPO found that McDonald’s failed to meet the required standard to prove that it had used the trade mark ‘BIG MAC’ in relation to any of the goods and services covered, including sandwiches.

This may be a surprise to many given the familiarity of the term, but the decision centres on the factual evidence presented to the EUIPO on which it has to make its decision, not on probabilities or presumptions.

The evidence filed by McDonald’s included:

  • three Affidavits signed by representatives of McDonald’s companies in Germany, France and the UK claiming significant sales of ‘BIG MAC’ sandwiches between 2011 and 2016 with examples of sandwich boxes, brochures and menus;
  • brochures and advertising posters;
  • printouts from various McDonald’s websites and a printout from the Wikipedia page providing information on the history of the ‘BIG MAC’.

Despite this, the EUIPO concluded that Affidavits signed by, or on behalf of, the interested party carried less weight than independent evidence.  Such statements should be assessed in light of other evidence submitted to support the allegations.

Whilst McDonald’s also filed brochures, advertising posters and website printouts, it failed to back these up with further details relating to, for example, the circulation of the advertising material, whether there have been any orders placed, pricing information, visits to the websites, or evidence of actual sales of product that would sufficiently support the sales and turnover figures.  The EUIPO also commented that the Wikipedia entries are unreliable as they can be amended by users.

In summary, McDonald’s failed to prove that the products marked with the trade mark ‘BIG MAC’ were offered for actual sale and there is no information of any actual sales taking place.  Turning to the provision of franchising and restaurant services, none of the evidence referred to such services being offered under the ‘BIG MAC’ mark.

Consequently, the EUIPO cancelled the trade mark registration in its entirety, indicating that the reasoning was due not to an excessively high standard of proof but to the owner’s restriction on the evidence filed.

Comment

This case highlights the importance of putting together a body of evidence that meets the EUIPO’s requirements for proving actual use of a trade mark.  In particular, there is a need to back-up any claims or statements made relating to sales, consumer engagement, extent and duration of use, etc. with factual evidence.

It also highlights that, however recognisable your trade mark may be, there is still a requirement to file sufficient evidence to meet the EUIPO’s standard of proof.  In general, the EUIPO require evidence showing the time, place, extent and nature of the use of a trade mark and the failure to demonstrate one of these factors can be fatal.

McDonald’s can appeal the decision and we will monitor this for further developments.  It is also worth noting that the cancellation of this trade mark does not mean that third parties can now use the ‘BIG MAC’ trade mark or similar on competing products, since other factors would need to be considered, including the fact that the cancelled registration is not McDonald’s only protection for ‘BIG MAC’ within the EU.

If you have any questions relating to best practice in trade mark use, or any other trade mark matter, please do not hesitate to get in touch with one of our attorneys.


© 2019 Wilson Gunn