Big 'Mac' Surprise
In a decision that will send shock waves to many brand owners, particularly in the food and drink industry, the EU Cancellation Division has revoked McDonald's EUTM for 'Big Mac' in its entirety, even in respect of sandwiches, despite being McDonald's signature product worldwide.
Supermac's (Holdings) Ltd (Supermac's) applied to revoke McDonald's International Property Company Ltd's (McDonald's) EU trade mark registration for 'BIG MAC' covering classes 29 and 30 (sandwiches etc) and class 42 (services associated with operating and franchising restaurants etc) (EUTM) on the basis that the EUTM was not put to genuine use during a continuous period of five years following the date of registration in relation to any of the registered goods and services.
McDonald's filed evidence of use demonstrating that the mark has been used in advertising and on the packaging of the goods that have been marketed. It is also claimed that ‘as commonly known and attested to in the affidavits’ millions of products were sold under the EUTM. McDonald's concluded that if the Cancellation Division considered the evidence to be insufficient to show genuine use for all of the contested goods and services, then the application for revocation has to be rejected at least in so far as it is directed against some of the goods and services (eg sandwiches).
Supermac argued that the evidence of use submitted by McDonald's was insufficient to prove that the EUTM was put to genuine use for anything other than sandwiches.
McDonald's had sought to rely on three affidavits, signed by representatives of McDonald’s companies in Germany, France and the United Kingdom. They claimed significant sales figures in relation to ‘Big Mac’ sandwiches for the period between 2011 and 2016 and attached examples of the packaging of the sandwich (boxes), promotional brochures and what appeared to be menus. McDonald's also submitted printouts from its websites and from the "Big Mac" Wikipedia page.
The Cancellation Division held that the evidence filed by McDonald's was insufficient to establish genuine use of the EUTM. In particular, it was held that:
Affidavits: statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter; the probative value of such statements depends on whether or not they are supported by other types of evidence (labels, packaging, etc.) or evidence originating from independent sources.
Extent of use: Although some of the evidence referred to the relevant time period (eg some of the brochures and printouts from websites) and to some of the Member States of the EU, and the EUTM is referred to in relation to at least some of the relevant goods (eg sandwiches), McDonald's failed to prove the extent of use of its mark.
Websites: the presence of the trade mark on websites can show, inter alia, the nature of its use or the fact that products or services bearing the mark have been offered to the public. However, the mere presence of a trade mark on a website is, of itself, insufficient to prove genuine use unless the website also shows the place, time and extent of use or unless this information is otherwise provided.
Brochures: although the submitted packaging materials and brochures depict the EUTM, there was no information provided about how these brochures were circulated, who they were offered to, and whether they have led to any potential or actual purchases. There was also no independent evidence submitted that could show how many of the products for which the packaging was used (if that is the case) were actually offered for sale or sold.
The Cancellation Division concluded that the evidence did not provide sufficient details concerning the extent of use; other than exhibiting the sign in relation to goods which could be considered to be part of the relevant goods, these materials do not give any data for the real commercial presence of the EUTM for any of the relevant goods or services, including sandwiches. It followed that the submitted brochures, packaging and printouts did not give sufficient information to support the sales and turnover figures claimed in the affidavits.
Why is this important?
This decision is not on its face particularly remarkable – the evidence filed by McDonald's did not satisfy the stringent criteria for demonstrating genuine use – yet viewed against the background that "Big Mac" is one of the most recognised brands in the world and the apparent acceptance by Supermac that 'Big Mac' had been used in respect of sandwiches, it is very surprising that McDonald's has not been able to demonstrate genuine use, at least in respect of the sandwiches/burgers for which it is so well known.
Any practical tips?
This decision demonstrates that even the owners of the most well-known brands cannot simply rely on reputation alone; all brand owners must satisfy the criteria set out by the EU IPO in order to demonstrate genuine use. The most important take home message appears to be that if brand owners are relying on information in an affidavit, it must also provide sufficient evidence in support of any statements made within that affidavit.