Burger Off – BIG MAC registration removed from EU Trade Marks Register due to issues with evidence

Duncan J Morgan | January 2019

The EU Intellectual Property Office (EUIPO) has just issued a decision removing the McDonald's International Property Company, Ltd.’s EU Trade Mark Reg. No. 62638 BIG MAC from the register on the basis of non-use.

This on the face of it somewhat surprising decision relates to a long running dispute between McDonald’s and the Irish fast food company Supermac, who are seeking to extend their activities beyond Ireland.  Supermac filed an action at the EUIPO to remove McDonald’s BIG MAC registration from the register on the basis that the latter had not used the mark in the EU for the goods and services it covered during the preceding five years.  Those goods and services are as follows:

Class 29:    Foods prepared from meat, pork, fish and poultry products, meat sandwiches, fish sandwiches, pork sandwiches, chicken sandwiches, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles, desserts.

Class 30:    Edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar.

Class 42:    Services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive- through facilities; preparation of carry-out foods; the designing of such restaurants, establishments and facilities for others; construction planning and construction consulting for restaurants for others.

Of course, it is well-known that McDonald’s sells a hamburger they call BIG MAC.  Indeed, McDonald’s asserted this as part of their case, arguing that the fact that they had sold millions of such burgers is “commonly known”, and that this was further confirmed in written statements from individuals who work for the company in the UK, Germany and France.  These statements were accompanied by sample advertising posters, menus, website printouts and an extract from the entry for BIG MAC on Wikipedia.

Nonetheless, these broad assertions as to general knowledge, and the accompanying material, were considered insufficient by the tribunal to meet the standard of evidence required to prove use in EU proceedings.  They reminded the parties that it is for the trade mark owner to prove genuine use within the EU, and that McDonald’s had not illustrated satisfactorily how the material they submitted showed use during the relevant 5 year period (much of their evidence was undated), or the extent to which it was used (for example, no material was provided showing how many visitors their various websites received).  They were also critical of the lack of corroborating evidence deriving from sources external to McDonald’s.

The decision is still open to challenge, and McDonald’s may well attempt to persuade an Appeal Board that the evidence they submitted should be considered sufficient to show that they had used BIG MAC as a trade mark in the EU at the relevant time (though whether this evidence could be considered to illustrate use for the various goods and services listed above that are not burgers is more questionable).  They can also take comfort from the fact that they still own other registrations for BIG MAC which are not at present under challenge.  In the meantime, the case is a stark reminder that no matter how famous a trade mark which has been registered in the EU for more than 5 years might be, where its use is challenged in proceedings, the time, place, nature and extent of its use in the EU must be clearly proven and explained in evidence.