McDonald's has prevailed in its second attempt to prove use of, and thereby maintain, its BIG MAC EUTM before the EUIPO Board of Appeal, following a challenge by Irish fast food chain, Supermac's.
The case highlights that, irrespective of how popular or well-known a mark may be, a trade mark owner must not assume that genuine use can easily be established, they must still prove the genuine use through appropriate evidence. Accordingly, sufficient evidence of the use of a trade mark must be provided to show the place, time and extent of the use, and should include independent evidence.
This decision is also a helpful reminder of the importance of regularly collecting relevant documents showing the use of trade marks to be able to defend rights in a non-use cancellation action. In addition, and notably, the Board of Appeal decision also demonstrates the extent to which a trade mark owner has the opportunity to provide additional evidence on an appeal to improve their prospects of successfully overcoming a non-use challenge. Of course, it remains important to provide strong and compelling evidence at first instance to avoid being in this situation.
In 2019, McDonald's lost its registered EU trade mark at the EUIPO Cancellation Division following a cancellation action by Irish fast food chain, Supermac's. Supermac's successfully argued that BIG MAC had not been put to genuine use for all of the relevant goods and services.
The burden of proof was on McDonald’s to prove genuine use of its mark in relation to the relevant goods and services and it failed to do so, as its evidence was not sufficient to establish genuine use of the BIG MAC mark. Evidence of use must show the place, time and extent of the use, and should include independent evidence, not just evidence from the trade mark owner.
McDonald’s had registered BIG MAC on 22 December 1998 for a wide range of food items and associated services in classes 29, 30 and 42. In 2017, Supermac’s applied to cancel the mark on the grounds there had not been genuine use for a continuous period of five years since registration.
McDonald’s did submit evidence of use, including witness statements providing sales figures and packaging together with promotional material and website extracts, focussing on the German, French and English markets. However, the EUIPO raised a number of issues with McDonald’s evidence:
- Affidavits from McDonald’s employees were less credible, in absence of independent evidence.
- Printouts from websites were not sufficient if the website did not also show the place, time and extent of use, or if this information was not provided.
- No information was given on how brochures etc were circulated, who they were offered to, and whether they led to any actual/potential purchases.
- Wikipedia evidence on the history of the Big Mac was considered unreliable.
McDonald's lodged an appeal before the EUIPO Board of Appeal.
EUIPO Board of Appeal decision
In December 2022, the EUIPO Board of Appeal overturned the original decision. McDonald's submitted a significant amount of additional evidence, all of which was accepted as admissible, including consumer surveys, advertising materials, Google Analytics data, and a financial audit report prepared by an independent auditing firm. When assessing the evidence, the Board of Appeal was more precise in its assessment of the submitted documents, commenting that the Cancellation Division had erroneously assessed each piece of evidence in isolation and failed to take into account specific statements. This meant the Board accepting some documents which had been disregarded by the Cancellation Division, including the Wikipedia printout and affidavits signed by McDonald’s employees.
While Supermac's contested the admissibility of McDonald's additional evidence, the Board accepted it on the grounds that it related to the Cancellation Division's findings and only supplemented and built on evidence submitted in the cancellation proceedings.
For now, the BIG MAC has maintained its EU protection, but the decision may be appealed to the General Court.