Big Mac, Big Mistake

The quality of evidence of use submitted can make or break a trademark cancellation defence, no matter how big the brand, as fast-food giant McDonald’s recently found to its cost. Vanessa Harrow outlines the decision and the lessons to be learned.

On 11 January 2019, the EUIPO issued a first-instance decision in a non-use cancellation action which had been filed against McDonald’s EU registration for the trademark BIG MAC. In the short decision of just eight pages, the EUIPO found flaws in the evidence of use submitted and concluded the evidence was not sufficient to show genuine use of the mark for any goods or services.

Background to the dispute

The recipe for McDonald’s Big Mac was by created in a McDonald’s franchise store in Pennsylvania and was first sold in 1967 (albeit under a different name). Known for its two beef burger stack and a distinctive sauce, the Big Mac has been a staple part of the McDonald’s menu for many years.

In 1996 an EU trademark was filed for the mark BIG MAC and registration was secured in December 1998.

However in April 2017, the BIG MAC registration was attacked by Supermac (an Irish company) for all the goods and services, namely:

• Class 29: Foods prepared from meat, pork, fish and poultry products, meat sandwiches, fish sandwiches, pork sandwiches, chicken sandwiches, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles, desserts.
• Class 30: Edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar.
• Class 42: Services rendered or associated with operating and franchising 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; the designing of such restaurants, establishments and facilities for others; construction planning and construction consulting for restaurants for others.

Supermac argued that the mark BIG MAC had not been put to genuine use within a continuous period of five years following the date of registration or within the five year period preceding the date of application for revocation.

Evidence

The evidence submitted by McDonalds consisted of 111 pages comprised of five annexes:

• An Affidavit of use in Germany made by the internal Head of Legal in Germany, with examples of promotional material and packaging showing the mark;
• An Affidavit of use in France made by General Counsel in France, with examples of promotional material showing the mark;
• An Affidavit of use in the UK made by Legal Counsel of the UK registered business, with examples of promotional material
• Excerpts from McDonald’s website in EU member states taken from 2014 and 2016; and
• A Wikipedia extract showing an article about the history of the Big Mac.

Criticisms and the decision

The EUIPO decision criticised the evidence, noting in particular:

• The statements are from the interested party or their employees, and such statements are generally given less weight than independence evidence. However, the probative value of such statements will depend on whether or not they are supported by other evidence.
• While extracts from a website can show use, the mere presence of a trademark on a website is, of itself, insufficient to demonstrate genuine use. The website should also show the place, time and extent of use (unless this information is provided elsewhere). The extracts did not show whether or how a purchase could be made and no evidence of any orders. The connection between the website and the number of items sold could not be established.
• The packaging materials and promotional material show the trademark but there is no information about how the material was used. There was no circulation data for the brochures, i.e. how they were circulated, who they were offered to, nor any information to show whether these led to any potential or actual purchases. Moreover, there was no independent evidence to show many of the products used the packaging which was shown.
• The materials did not give any data for the real commercial presence of the trademark for any good or service.
• Wikipedia is not a reliable source of information as the entries can be amended by users.

Interestingly, the counter party conceded that there had been use for a ‘sandwich including a beef patty, lettuce, cheese, pickles, onions and a special sauce’. Nevertheless, the EUIPO found the evidence insufficient to maintain the registration even for a limited specification of goods and the registration has been revoked for all goods and services, stating:

“The documents do not provide conclusive information that the products marked with the EUTM are offered for actual sale, as there is no confirmation of any commercial transactions, either online, or via brick-and-mortar operations offered for sale, there is no data about how long the products were offered on the given web page or in other ways, and there is no information of any actual sales taking place or any potential and relevant consumers being engaged, either through an offer, or through a sale. Finally, as far as the relevant services are considered, there is no single piece of evidence that refers to any of the registered services being offered under the EUTM.”

Lessons to be learned

The Big Mac, at least in the UK is well-known and many would not have thought the attack by Supermac would be successful. This appears to be a case which has fallen down simply because the evidence submitted was not good enough rather than because there is actually insufficient use.   

The need to file evidence of use can crop up in many cases and failure to provide adequate evidence could have a devastating impact on cases. The EUIPO decision highlights some important things to keep in mind when preparing evidence:

• Independent third party evidence is generally the strongest.  
• If you cannot obtain third-party evidence, make sure internal statements are supported by other persuasive evidence (e.g. invoices, bills of lading, orders etc.)
• When providing copies of brochures and marketing material, be sure to explain how and where these were distributed as well as the dates and extend of use.
• When submitting website extracts, consider whether the website shows how to purchase the goods/services and if possible submit supporting data including the website traffic, number of customers, period and territory and details of orders made through the website.
• Consider the reliability of the material you are submitting and the source of such material.
• Genuine use has to be proven by the evidence and cannot be inferred from the Examiner’s own knowledge.  Your trademark may be well-known and extensively used but you have to submit evidence to convince the Examiner of this fact.

For more information and tips on preparing evidence, see our article ‘Trademark tips: Preparing evidence of use’.

Vanessa Harrow is a Trademark Attorney in Novagraaf’s Manchester office