Extraordinary decision regarding McDonald's BIG MAC trademark
The case in brief
Since 1998 McDonald's has been the proprietor of the EU trademark BIG MAC, registered in foodstuff classes 29 and 30, among others. The Irish fast-food chain Supermac's filed a revocation request with the EUIPO in 2017 regarding this trademark, alleging that McDonald's had not put the trademark to genuine use; meaning that McDonald’s had not used the trademark for the goods in question over the last five years.
McDonald’s tried to prove to the EUIPO that the trademark had been used by submitting the following documentation:
- 3 affidavits signed by McDonald's representatives from Germany, France and the UK, describing the extensive sale of BIG MAC hamburgers in the period between 2011 and 2016.
- Brochures and printouts of BIG MAC marketing material in French, German and English as well as BIG MAC packaging from the period between 2011 and 2016.
- Printouts of a wide range of McDonald’s European websites from the period 7 January 2014 to 3 October 2016.
- Printout of a Wikipedia page regarding the BIG MAC hamburger.
However, the EUIPO did not find that McDonald's documentation sufficiently proved that the trademark had been put to use, leading them to revoke the trademark registration.
Among other things, the EUIPO found that the affidavits from McDonald's own representatives were to be given less weight than independent evidence, as these affidavits could be influenced by McDonald's own interests in the case, and that the marketing material and packaging bearing the trademark did not prove that products had actually been offered for sale under said trademark.
The rules on the use requirement
McDonald’s had not documented having fulfilled its so-called “use requirement”. The use requirement is based on a so-called “use it or lose it” principle, and it means that a trademark can be lost or found invalid if it is not being used. This means that the consequences of not using a trademark can be very serious for a trademark proprietor.
Does this mean that anyone can use BIG MAC as a trademark?
You might be tempted to think that the EUIPO decision means that now anyone can sell hamburgers under the BIG MAC name. However, that is not the case. Firstly, McDonald’s could appeal the EUIPO decision. Secondly, McDonald’s is the proprietor of another registered EU trademark and several registered national trademarks (for instance in Denmark) in relation to BIG MAC.
The impact of this case
The EUIPO decision shows that it is important for any trademark proprietor to be aware of the necessary documentation in relation to the use requirement - regardless of how well-known your trademark might be.
The case also shows that the EUIPO will only consider evidence that is being presented to them, and that this evidence must be objective and should not just be subjective such as an affidavit from an employee. So, if a trademark proprietor is unable to produce such evidence, the risk could be that the trademark will be revoked due to lack of use.
Overall, it is a good idea to continuously store documentation showing the sale of products under your trademark, or marketing material, packaging, etc., proving that you have put your trademark to genuine use.
Want to know more?
If you have any questions, please contact Plesner's Trademark team.