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BIG MAC before Court: A History of Use and Lapse
The news is all over the newspapers: from what we read it would appear that the giant McDonald's has been deprived of the possibility of using its 'BIG MAC' trademark.
However, not everything one reads is true: being in the age of fake news, one has to look deeper into the matter.
Let’s start from the beginning.
In 1996, McDonald's International Property Company, Ltd. (hereinafter Supermac’s) filed a EUTM application for 'BIG MAC' (word mark) for goods and services in classes 29, 30 and 42.
Over 15 years later, the Irish company Supermac’s (Holdings) Ltd filed a EUTM application for 'SUPERMAC’S' for goods in class 30.
McDonald’s then filed an opposition against 'SUPERMAC’S' claiming a risk of confusion with their own trademarks.
As a reaction thereto, in 2015 Supermac’s filed a cancellation action against the trademark 'BIG MAC' before the EUIPO for non-use claiming that said trademark had not been effectively used for the distinguished products indicated upon filing for a continuous period of five years.
In reply, McDonald’s submitted proofs of use, especially with respect to Germany, France and the United Kingdom (which at that time was still an EU Member State), but these proofs mainly consisted of so-called internal documents, i.e. company documents such as affidavits, advertising brochures and posters and extracts from their websites and Wikipedia pages.
As the evidence provided was not supported by other 'external' elements such as invoices, newspaper articles and the like, the EUIPO’s Cancellation Division, considered it insufficient as failing to prove effective and genuine use of the 'BIG MAC' trademark.
The EUIPO thus granted the request for cancellation submitted by Supermac’s and declared the 'BIG MAC' trademark lapsed for non-use in respect of all the goods and services covered by it.
McDonald’s, however, did not give up and appealed against such decision. The EUIPO’s Board of Appeal partially annulled the decision of the Cancellation Division and declared that the 'BIG MAC' trademark should not be considered lapsed in respect of some goods, including 'edible sandwiches', 'meat sandwiches' and 'chicken sandwiches'.
Supermac’s in turn appealed to the Court of Justice of the European Union (CJEU) requesting that the decision of the EUIPO’s Board of Appeal be overturned. Particularly, Supermac’s challenged this decision with respect to edible sandwiches and chicken sandwiches by claiming that no effective use thereof had been proved by McDonald’s.
The CJEU did, in fact, agree with Supermac’s, stating that no sufficient evidence of effective use had been submitted by McDonald’s with regard to the products 'chicken sandwiches' and ' foods prepared from poultry products' as well as to services 'associated with operating restaurants, drive-through facilities and preparation of carry-out foods'.
According to the CJEU, McDonald’s did not provide any indication as to the extent of use of the trademark 'BIG MAC' for such goods and services, especially as far as the volume of sales, the duration of the period in which the acts of use were carried out and their frequency are concerned.
In the end, McDonald’s indeed lost protection of their trademark for the products mentioned in the penultimate paragraph above, but − we would add − 'only' for them and not for all the products for which protection was sought in 1996.
Although media reports claim that McDonald’s has lost its rights to the 'BIG MAC' trademark, this is only true for chicken sandwiches and other chicken-based foods. Instead, McDonald's will be able to use it for the famous meat sandwiches for which the name BIG MAC is known worldwide.
The lesson we can draw from this case is that not even the reputation McDonald’s enjoys has allowed it to win on all fronts: no matter how famous one is, the same burden of proof is imposed upon all trademark owners when it comes to proving genuine use of their rights.