McDonalds loses “Big Mac” trade mark over failure to prove “genuine use”

This month, the EU Intellectual Property Office (EUIPO) found against McDonald’s in a trade mark dispute concerning its “Big Mac” trade mark.

McDonalds’ successful opponent was “Supermac’s” – an Irish fast-food chain with 116 outlets across Ireland and Northern Ireland. The case has been seen by many as a step towards preventing “trade mark bullying” by large corporations. However, perhaps more importantly it emphasises the importance of providing sufficient evidence of “genuine use” in trade mark disputes.

What happened?

This case arose when the Irish chain wanted to expand into the UK and other territories within Europe. McDonald’s attempted to prevent this, arguing that this would constitute infringement of its trade mark, “Big Mac”, as it would give Supermac’s an “unfair advantage” in respect of its “distinctive character and repute.”

In response to this, Supermac’s alleged that McDonald’s was not entitled to retain this trade mark, because it did not satisfy the requirement that the trade mark be “put to genuine use”.

In support of its case, McDonald’s submitted evidence in an attempt to prove that it offers Big Macs for sale across Europe, and as such, is entitled to retain the trade mark. Evidence included printed website pages, a printed Wikipedia page, examples of its packaging and advertising and signed affidavits (written statements) from McDonald’s executives, containing information about the high level of sales of the “Big Mac” sandwich.

So what did the EUIPO find?

The Cancellation Division of the EUIPO found in favour of Supermac’s, ruling that McDonald’s had not successfully proved genuine use of the trade mark. Crucially, McDonalds’ evidence of use was insufficient – it had not produced evidence that products bearing the trade mark in question had been offered for sale and subsequently sold to consumers.

Since McDonald’s failed to prove “genuine use”, the Cancellation Division ruled that its “Big Mac” trade mark should be wholly revoked.

Prevention of “trade mark bullying”?

This case has been seen by many as a step towards preventing large corporations from engaging in the practice of “trade mark bullying” to the detriment of smaller companies. Supermac’s founder, Pat McDonagh, has stated: “This is a victory for all small businesses. It prevents bigger companies from hoarding trademarks (sic) with no intention of using them.”

However, central to the EUIPO’s decision was that McDonald’s did not provide sufficient evidence of actual sales of products which had the trade mark in question displayed. McDonalds plan to appeal the decision and if they are able to produce such evidence (which they will likely be able to do) the outcome of the case may be very different.

 

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