Has McDonald's used the BIG MAC trade mark in Europe since 2017? You would think the answer is yes, but not according to the European Union Intellectual Property Office (EUIPO) which has revoked the BIG MAC EU trade mark for non-use. The decision is a useful reminder of the principles to be applied in defending trade mark revocation applications for non-use.
The BIG MAC registration in question covered a wide variety of goods, including meat sandwiches, mustard and (perhaps surprisingly) preserved and cooked fruits and vegetables. It also covered a range of services, including operating a restaurant, construction planning and consulting for restaurants.
In April 2017 Supermac's applied to the EUIPO for revocation of the BIG MAC mark, arguing that McDonald's did not put the BIG MAC mark to genuine use in the EU between 2012 and 2017 in relation to any of the goods and services for which it was registered, other than sandwiches. McDonald's defended the application for revocation on the basis that the BIG MAC mark was used in a number of EU Member States and relied on evidence showing that the trade mark was used in its advertising and packaging. McDonald's further claimed that it was "commonly known" that it sold millions of products under the BIG MAC trade mark.
What is Genuine Use?
The EUIPO can revoke an EU trade mark if, within a continuous period of five years, it has not been put to genuine use in the EU for the goods or services for which it is registered and there are no proper reasons for non-use. This means that a trade mark owner cannot sit on its rights - there must be actual use of the mark in the course of trade to guarantee the origin of the goods or services for which the mark is registered. In revocation proceedings the onus is on the trade mark owner to prove that the mark in question has been put to genuine use. This requires evidence that the mark has been used in connection with the sale or advertising of the relevant goods and services.
To show genuine use of the BIG MAC mark in the EU, McDonald's submitted three affidavits from employees in Germany, France and the UK which attested to significant sales of Big Macs between 2012 and 2017. McDonald's also provided examples of menus, packaging, promotional brochures and printouts from its EU websites which included the BIG MAC mark and also the Wikipedia entry for Big Mac.
Decision of EUIPO
The EUIPO was highly critical of the quality of the evidence...