Unusually for most EUIPO cancellation division decisions, this one spent quite a bit of time in circulation with major news outlets. In a legal tussle with the Irish chain Supermacs, McDonald’s failed to prove that it had used the trade mark BIG MAC in Europe to a sufficient degree to retain its EU trade mark. The fact that it clearly had used the mark in reality (most of us have bought a Big Mac in Europe, or are at least aware of its existence) had no bearing on the case. How could this be?
Revocation of trade marks for non-use
In the EU, as in the UK, trade mark owners must be able to prove use of their marks for the specific goods and services for which they are registered within five years of the registration date. After that there must not be a period of five years or more in which the mark is not used.
If a mark is tested, as the BIG MAC mark was, by an application for revocation for non-use, its survival depends on the evidence that is offered up to prove its validity through use. In this case, McDonalds only offered up the following items as evidence: three affidavits from McDonald’s reps, brochures and posters showing the mark, printouts from McDonald’s websites, and a Wikipedia print out.
The evidence was criticised for carrying little weight when it originated from McDonald’s itself, even less so when it came from Wikipedia. No traffic figures were given for the websites, no information given in relation to the circulation of advertising materials. The EUIPO cancellation division were largely left to their own devices in taking it as read that these items were widely distributed. Based on this evidence, the decision that BIG MAC had not been used in the previous five years was made. It is a decision that McDonald’s will almost certainly appeal.
Does this mean it’s time for me to start selling my own Big Macs?
Definitely not. Whilst (as English lawyers) we can’t comment on Burger King’s Swedish escapades, we can point out that just because the EUTM for BIG MAC has been revoked (as things stand), it doesn’t mean that McDonald’s are powerless to protect their most famous burger. An action for passing off can still be brought in England against anyone looking to sneakily benefit from the goodwill that has built up in it over the last few decades, and you can guarantee that there won’t be any evidentiary hiccups this time around.
It’s an odd one. It is hard to imagine anyone coming to the conclusion that this is a just decision, even if it is arguably a technically accurate one. Clearly the mark has been used globally, extensively, and for many years. The decision also appears to encourage throwaway non-use actions: it might be worth filing for revocation in most cases just to see whether the other side drop the ball. Neither the legal fiction nor the procedural quirk are particularly helpful from a policy perspective. Litigants should have faith in the right decisions being made, and in the process being a fair one.
That aside, bear in mind that evidence of use will always benefit from details of: sales volumes, readership numbers, advertising spend, website traffic, and invoice samples. The aim is to show extensive, real commercial use, during the relevant five year period, throughout the territory in question.