"BIG MAC anyone?" No… never heard of it

Trade mark registrations can of course potentially last forever, provided that the proprietor pays the renewal fees and that the mark is actually being used commercially. However, there is a general policy, written into trade mark law, that a trade mark owner should not be able to continue its monopoly without actually using the mark in commerce. So called “defensive” marks (i.e. registrations which are designed or have the effect of preventing others from using a trade mark) are prevented by a number of different measures – including the ability to cancel trade marks which have been registered in bad faith and also where the proprietor cannot show genuine use of the mark for a period of time (in some jurisdictions this period is three years, in others, five). It was this second ground which was the cause of McDonald’s difficulties. An Irish fast food chain, Supermac’s, brought an action for a cancellation of the EU trade mark registration for ‘BIG MAC’ (the “Mark”) pursuant to article 58(1)(a) of the EU Trade Mark Regulation (2017/100). Supermac’s argued that McDonald’s had not put the Mark to genuine use within a continuous period of five tears in respect of the goods and services for which it was registered.

In cancellation proceedings for non-use, the burden of proof rests with the trade mark owner to show evidence of use. McDonald’s therefore had to provide evidence of its use of the Mark in the relevant period (here 11/04/2012 to 10/04/2017). Whilst the American fast food chain did adduce evidence, it was deemed insufficient. The Cancellation Division evoked the general principle that “the indications and evidence of use must establish the place, time, extent and nature of use of the contested mark for the goods and/or services for which it was registered”. The Mark was cancelled in its entirety, (including for goods such as sandwiches).

What evidence did McDonald’s provide? Three affidavits from its representatives in Germany, France and the UK exhibiting brochures and printouts of advertising posters; packaging for sandwiches; printouts from various McDonalds’s European websites and a printout of a Wikipedia page about Big Mac. Readers might think that this collection of evidence might easily satisfy the requirements, but as with so many aspects of trade mark law, the devil is in the detail.

Looking at different kinds of evidence, the Cancellation Division has set out a number of useful recommendations of what is needed to prove genuine use:

• Affidavits: It was noted that the statements from the representatives of the parties are given less weight than those of independent third parties. So whilst such affidavits do have probative value, they should be supported by other types of evidence or by independent sources;
• Website extracts: When relying on such evidence, trade mark proprietors should adduce data on website traffic, hits and the number of orders made through a website within the relevant period and territory – the fact that the mark was displayed on the website in question is not sufficient to show sales under or by reference to the mark;
• Advertising materials: Evidence of advertising must include information on the method(s) of circulation, the target audience of such materials and whether such advertising led to actual sales (e.g. how many products using the packaging shown have been offered for sale);
• Commercial data: Trade mark owners should provide confirmation of commercial transactions (whether online or at physical outlets) and data on how long the products/services were offered in respect of a particular sales channel;
• Wikipedia printouts: Unsurprisingly, entries from Wikipedia were not seen as a reliable source due to the fact that they can be freely amended by anyone. Whilst it seems that the Cancellation Division did not entirely reject possibility of considering such evidence, it needs to be supported by independent sources.

McDonald’s evidence was criticised for not providing “any data for the real commercial presence of the [Mark] for any of the relevant goods or services” (emphasis added). The Cancellation Division also mentioned that the fast food giant failed sufficiently to support the sales and turnover data stated the affidavits with other type of evidence.

The decision serves as a reminder that brand’s use has to be properly documented, even where it belongs to a huge international company. Otherwise a cancellation request from a third party may prove disastrous. It is likely that McDonald’s will seek to appeal this decision, or can otherwise rely on a number of other trade marks in its extensive international portfolio to maintain protection for its BIG MAC brand. Nevertheless, brand owners should treat this example as a cautionary tale and ensure that they keep and above all deploy relevant evidence of use for each of their trade marks.

If you have any questions about this decision, about trade mark protection or about intellectual properties more generally, do not hesitate to contact Carl Rohsler or Martyna Polak.