Rebecca Ablett from ACID’s Scottish Legal Affiliates, Burness Paull talks us through McDonald’s latest IP challenge.
Last year, McDonald’s iconic Big Mac burger celebrated its 50th anniversary. Since its launch in 1968, the Big Mac’s continued popularity has cemented its status as the one of the most renowned burger marks in the world, with sales in more than 100 countries and an estimated 28 Big Macs sold globally every second. However, despite its undoubted success with consumers, it hasn’t all been plain sailing for McDonald’s, who recently received a grilling from the Cancellation Division of the EU Intellectual Property Office (“EUIPO”) in a decision which revoked the company’s EU trade mark for “BIG MAC” (trade mark number 62638) (the “Big Mac Mark”) and highlighted the importance of brand owners being able to demonstrate genuine use of their trade marks.
In 1998, the Big Mac Mark was registered in three classes of good and services, including meat sandwiches and restaurant services. The drive-thru to revocation began on 11 April 2017, when Supermac’s (Holdings) Ltd (“Supermac’s”) filed an application for revocation of the Big Mac Mark under Article 58(1) of the EU Trade Mark Regulation, on the grounds that the mark has not been put to genuine use during a continuous period of five years following the date of registration.
Founded by Pat McDonagh in 1978, Supermac’s is an Irish fast food chain with over 100 outlets across the country. The long-running burger battle dates back to 2014, when McDonald’s halted Supermac’s planned expansion into the UK and Europe by filing an opposition against the registration of its EU trade mark for “Supermac’s” on the basis that this would lead to confusion between the two brands.
In response to Supermac’s application for revocation, McDonald’s filed evidence of use, including three affidavits signed by representatives of McDonald’s in the UK, Germany and France; brochures and printouts of advertising posters; print outs from numerous McDonald’s websites; and a Wikipedia entry relating to the Big Mac.
In a ruling which has surprised IP specialists and burger fans alike, the EUIPO concluded that the evidence submitted by McDonald’s was insufficient to establish genuine use of the Big Mac Mark in the relevant territory during the relevant period. As a result, the EUIPO revoked the Big Mac Mark in its entirety.
The decision of the Cancellation Division reaffirms when genuine use of a trade mark will exist, namely, where the mark is used in accordance with its essential function – which is to guarantee the identity of the origin of the goods or services for which it is registered. Whilst McDonald’s has already shown appetite for a second helping at the EUIPO by confirming that it intends to appeal, the ruling contains a number of useful reminders for trade mark proprietors:
The revocation of the Big Mac Mark is a stark reminder of the importance of brand owners being able to demonstrate genuine use of their trade marks, regardless of their size – yes a Big Mac is big, but not quite big enough to rely on insufficient evidence! However, the above reminders highlight that there are a number of measures which trade mark owners can adopt to avoid a similar fate.
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