How McDonald’s lost its Big Mac trademark

How could this happen?

Under EU trade mark law, an application to revoke a trade mark can be successful if the trade mark has not been put to genuine use in the EU within a continuous period of five years for the goods or services for which it is registered (and there are no proper reasons for non-use). Supermac’s have reportedly struggled to register their own EU-wide trade mark on the basis that it was too similar to McDonald’s trade mark. They applied to have the Big Mac trade mark revoked on grounds that McDonald’s had not demonstrated “genuine use” of it.

Crucially, in proceedings of this kind it is up to the trade mark owner to prove genuine use (or proper reasons for non-use). Although McDonald’s claimed that it was “commonly known” that it had sold millions of products under the brand and submitted evidence in support of its use of the Big Mac trade mark, the EUIPO held that the evidence was insufficient.

A summary of the evidence, and why it was insufficient

• Affidavits, signed by company representatives claiming significant sales figures in relation to ‘Big Mac’ sandwiches and attaching examples of the packaging, brochures and menus – The EUIPO stated that evidence of this nature submitted by a party to the dispute may be affected by their personal interests, so its value has to be assessed after looking at evidence from independent sources.
• Various printouts from McDonald’s websites – The EUIPO stated that the mere presence of a trade mark on a website is insufficient to prove genuine use. McDonald’s failed to provide records in relation to internet traffic or to show how purchases or orders could be made, so a connection between the websites and the eventual number of items sold could not be established.
• Brochures and print-outs of advertising posters – The EUIPO stated that no evidence was provided as to how many of the products for which the packaging was used were actually offered for sale or sold.
• A print-out from Wikipedia – The EUIPO stated that Wikipedia entries cannot be considered as a reliable source because they can be amended by Wikipedia’s users and therefore can only be considered relevant as far as they are supported by other pieces of independent concrete evidence.

The EUIPO therefore decided that it was unable to conclude “without resorting to probabilities and presumptions” that the mark was genuinely used during the relevant period for the relevant goods or services. It also noted that the decision was “due not to an excessively high standard of proof, but to the fact that the EUTM proprietor chose to restrict the evidence submitted”.

Lessons learned

• This case highlights the importance of submitting comprehensive evidence in all types of trade mark proceedings. Even the most well-known brands are not presumed to be in genuine use or automatically safe from revocation. It is up to the trade mark owner to prove use and asserting that a fact is “commonly known” is unlikely to carry any weight with the EUIPO.
• This case demonstrates how crucial successful exploitation and protection of IP can be to the growth and success of a business, whether a small start-up or a multinational organisation. Particularly when expanding into new territories, it is important to take steps to protect your own IP, and establish the existence of any competing brands in your intended marketplace.
• The case also shows that even very well-known brands can be challenged successfully. Although it seems likely that McDonald’s could have demonstrated use of the “Big Mac” brand for sandwiches had they filed the correct evidence, they may nevertheless have struggled to prove use for other goods and services covered by the trade mark, notably “restaurants”.

If you would like to discuss protecting your brand with the Ward Hadaway Trade Mark team please contact Bill Goodwin, Solicitor and Chartered Trade Mark Attorney on 0113 205 6643 or bill.goodwin@wardhadaway.com