McDonald’s European Union trademark Big Mac cancelled due to non-use
Intellectual Property Commentary
On January 11 2019 the EUIPO’s Cancellation Division revoked European Union trademark 62.638 BIG MAC, filed in 1996 by the famous fast-food chain McDonald’s. Although the mark had been registered since 1998, in April 2017, the Irish fast-food chain Supermac’s filed an application for revocation of the trademark BIG MAC due to non-use, based on article 58.1 of the European Union Trademark Regulation.
In the proceeding, McDonald’s had to prove that it had used the trademark BIG MAC on the goods and services for which it was registered (including sandwiches and restaurant services), between April 11, 2012 and April 10, 2017, i.e. in the 5-year period preceding the date of the revocation request.
McDonald’s submitted the following documents:
Three affidavits from McDonald’s representatives in Germany, France and the United Kingdom containing figures on sales, packaging of hamburgers and promotional materials for this period.
Printouts from McDonald’s websites in several EU countries, which showed among other items, BigMac hamburgers.
Printout from Wikipedia regarding the BigMac hamburger.
After reviewing the documents submitted, the EUIPO concluded that they were insufficient to demonstrate that the products identified under the trademark BIG MAC had actually been offered to the public or sold in Europe, either via the website or in physical stores. The EUIPO found that not even the extent of the use on the services for which the mark was registered had been proven.
The EUIPO held that the documents submitted had been obtained from McDonald’s own records and had not been substantiated by statements or materials by third parties. The Office was not convinced because it had not been proven whether the brochures or packaging had actually been distributed and who it was offered to. In addition, the information submitted did not contain any figures on the number of visitors to the website or whether products could be ordered on the website. The conclusion reached was that an extract from Wikipedia was not a reliable source of information since it could be modified by users. Consequently, the EUIPO’ cancellation division ruled that the mark BIG MAC had not been put to genuine use in the EU in the relevant period and therefore revoked the trademark.
Although we will now have to wait and see whether McDonald’s appeals the decision, this is not the end of BIG MAC for the time being, since the fast-food chain continues to own other “BIG MAC” trademarks in the EU. Therefore, third parties will have to wait if they want to use the term lawfully.
This possibility of filing an application for revocation of a trademark with the administrative body is one of the changes introduced by the new Spanish trademark law (Royal Decree-law 23/2018, of December 21, 2018). In the case of Spanish trademarks, it is the Spanish Patents and Trademarks Office that will rule on the invalidity or revocation of a trademark, although the courts will still have jurisdiction when the application for invalidity or revocation is filed in a trademark infringement proceeding as a counterclaim. However, this is not due to come into force until January 14, 2023.