Return of the Mac – Part III

Even the most iconic of trade marks, such as McDonald’s BIG MAC, can be vulnerable to a revocation attack if they are not used properly, and the recent instalment of the “McDonald’s versus Supermac’s” dispute shows just how important it is for trade mark owners to have evidence gathering protocols in place, in the event that one of their trade mark registrations is attacked on the basis of non-use.

Background of the case

Once registered, a trade mark protects against use by others of an identical sign in relation to the goods and services covered. This protection extends to similar signs and similar goods or services if a risk of confusion arises.  Provided that the registered trade mark is renewed (every ten years in most countries), the protection is indefinite.

However, rights in a registered trade mark can be revoked if the mark is not put into genuine use for a continuous period of five years (in the case of UK and EU trade mark registrations). If the trade mark is used for some goods or services but not others, the registration can be revoked in relation to the goods or services for which use is not proven.

A trade mark registration is not automatically revoked after five years of non-use, but instead becomes open to an application for revocation by others.  In practice, this usually plays out in the context of a counter attack against a trade mark owner trying to enforce its rights in a trade mark that is more than five years old.

This is what happened in the current dispute between McDonald’s and Irish company Supermac’s (Holdings) Ltd. Supermac’s trade mark application for SUPERMAC’S was opposed by McDonald’s (owner of a EU registered trade mark for BIG MAC since 1998), with McDonald’s claiming that consumers would be confused between SUPERMAC’S and BIG MAC.

Supermac’s decided to retaliate and filed for the revocation of McDonald’s EU registration on the basis that McDonald’s had not used the mark BIG MAC for food products in classes 29 and 30 and restaurant operating services in class 42.

The burden of proof was on McDonald’s to show genuine use of BIG MAC within the EU, and as a first instance decision[1], the European Union Intellectual Property Office (“EUIPO”) revoked McDonald’s registration in its entirety. Given McDonald’s omnipresence in the towns of Europe, this was a most surprising decision and was, for the most part, attributed to poor-quality evidence submitted by McDonald’s. Notably, the EUIPO drew criticism of filed Wikipedia pages for being an unreliable source (due to its editable nature) and affidavit evidence from non-independent sources for being low on credibility.

McDonald’s appealed the decision, and in doing so, looked to file additional evidence of use in front of the Board of Appeal[2] in 2019. This time, McDonald’s filed additional evidence of use – some 700 pages worth, consisting of consumer surveys, online newspapers and magazine articles, copies of receipts, marketing material, and website analytics.

The Board, accepting additional evidence and also finding that the EUIPO erroneously assessed the earlier evidence in an isolationist manner, partially annulled the EUIPO’s decision with the finding that McDonald’s evidence of use was sufficient to prevent most of their goods and services from being revoked.

Supermac’s contested the Board of Appeal’s decision to the EU General Court stating that the BIG MAC mark was only really used for “meat sandwiches.”

General Court decision

Recently published[3], and with further scrutiny of McDonald’s filed evidence, this latest decision has resulted in yet another partial reversal of a previous hearing, and for the second time, McDonald’s evidence was found wanting in showing genuine use and therefore resulted in most of the goods and services being revoked again, with only sandwich goods remaining.

To note, McDonald’s had provided menus and posters (shown below) used in France, which showed that it had a BIG MAC chicken sandwich on its menu; however, the Court criticised the lack of contemporaneous evidence to show the volume of sales, the length of the period during which the mark was used, and the frequency of use.

Comments

The main takeaway from all three decisions is that, no matter how big a trade mark owner is, it ought to regularly collect appropriate evidence showing genuine use and ensure that that evidence is legally persuasive. In the present instance, it seems that McDonald’s wrongly believed that the reputation attached to its BIG MAC trade mark would be sufficient to demonstrate use. However, the Court highlighted the need for trade mark owners to collect and submit “solid and objective evidence of actual and sufficient use of the trade mark on the market concerned.”

Trade mark owners should regularly collect evidence of their trade mark being put to use; that includes evidence showing sales but also advertising (for example via posters or online marketing) along with evidence linking the use to a time and place. This case also shows that it is always preferable to submit evidence taken from external or independent sources.

[1] Supermac’s (Holdings) Ltd v McDonald’s International Property Company, Ltd. 2017 (Case 14 788 C).

[2] McDonald’s International Property Company, Ltd. v Supermac’s (Holdings) Ltd 2019 (Case R 543/2019-4)

[3] Supermac’s (Holdings) Ltd v European Union Intellectual Property Office (EUIPO) 2024 (Case T‑58/23)