In a decision dated 11 January 2019, the European Union Intellectual Property Office (EUIPO) cancelled McDonald’s “Big Mac” EU trademark.
The Irish company Supermac had submitted an application for revocation of the ‘Big Mac’ trademark due to lack of use by McDonald’s. As a result, McDonald’s had to prove that it had put the trademark to genuine use for the goods for which it was registered in the 5 years previous to the application for revocation.
McDonald’s evidence included: (i) affidavits signed by McDonald’s representatives in Germany, France and the United Kingdom in relation to sales figures for Big Mac sandwiches between 2011 and 2016, (ii) brochures and printouts of Big Mac advertising posters in German, French and English dated between 2011 and 2016, (iii) printouts from national McDonald’s websites dated between 2014 and 2016, and (iv) a printout from Wikipedia relating to the Big Mac hamburger.
In its decision, EUIPO found that the evidence submitted by McDonald’s was insufficient to establish genuine use of the Big Mac trademark, resulting in its cancellation. EUIPO stated that McDonald’s had failed to produce evidence of actual sales of the goods bearing the trademark. According to EUIPO, there was no evidence of: (i) the number of visitors to the websites or the number of goods actually purchased through these websites, (ii) how the brochures were distributed and whether they had led to any purchases, and (iii) how many of the goods bearing the packaging had actually been sold. EUIPO in general accepts affidavits, but these are given less weight if they come from within a trademark holder’s own organisation and it is of the opinion that they should be supported by evidence from independent sources. The Wikipedia page was ruled not to be a reliable source of information.
This decision reminds trademark owners to pay attention to proof of genuine use submitted before EUIPO, even if it concerns trademarks that are extremely well-known. McDonald’s has appealed EUIPO’s decision.
Please contact Karel Janssens for further information on this case and/or for general legal advice relating to Intellectual Property law.