In a decision that may come as somewhat of a surprise to lovers of McDonald's Big Mac sandwich, the EUIPO cancellation division has recently opted to cancel McDonald's EU trade mark (EUTM) registration for Big Mac, on the grounds that this mark has not been genuinely used in the EU over the past 5 years.
The challenge to McDonald's use of its Big Mac mark was filed by Supermac's, an Irish fast food restaurant group, in response to McDonald's successfully preventing their attempt to register their own mark SUPERMAC'S in relation to their core goods and services of interest in Classes 29, 30 and 43.
In response to Supermac's cancellation action, McDonald's filed 3 affidavits, signed by representatives of its UK, French and German companies, along with examples of their Big Mac packaging and promotional materials. They also filed extracts from several of their own EU national websites, as well as an extract from Wikipedia providing information about the Big Mac hamburger.
Following an examination of the various materials filed by McDonald's, the EUIPO determined that this evidence was insufficient to establish genuine use of the mark Big Mac in relation to any of the goods/services protected under the mark, despite an admission from Supermac's that the Big Mac mark had been used in relation to sandwiches.
The EUIPO reasoned that "statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence" and noted that "the probative value of such statements depends on whether or not they are supported by other types of evidence (labels, packaging, etc.) or evidence originating from independent sources". Whilst McDonald's filed examples of its packaging and brochures, these materials were not sufficient to demonstrate the extent to which the mark had been used throughout the EU. In particular, the EUIPO concluded that there was "no information provided about how these brochures were circulated, who they were offered to, and whether they have led to any potential or actual purchases" and "no independent evidence submitted that could show how many of the products for which the packaging was used (if that is the case) were actually offered for sale or sold".
The EUIPO appeared to be equally unimpressed by the extracts provided from McDonald's websites, noting that McDonald's had failed to provide any evidence to show that its products had been sold via its websites, or to provide any records relating to the internet traffic or number of hits at each of its webpages or information relating to the countries where its webpages had been accessed.
With regard to the Wikipedia extracts provided, the EUIPO commented that "Wikipedia entries cannot be considered as a reliable source of information, as they can be amended by Wikipedia's users and therefore these could only be considered relevant as far as they are supported by other pieces of independent concrete evidence".
Overall, the EUIPO noted that the various documents filed "do not provide conclusive information that the products marked with the EUTM are offered for actual sale, as there is no confirmation of any commercial transactions, either online, or via brick-and-mortar operations". Furthermore, the EUIPO noted that there was no single piece of evidence that referred to any of the registered services being offered under the mark.
This therefore led the EUIPO to conclude that the Big Mac mark had not been put to genuine use in the EU. In its conclusion, the EUIPO noted that the burden is on the EUTM proprietor to demonstrate genuine use of a mark, and noted that it is not for the EUIPO to resort to probabilities or presumptions as to the use that has been made of a mark during the relevant period. The EUIPO finally noted that the methods and means of proving genuine use of a mark are unlimited, and noted that McDonald's failure to prove genuine use was not as a result of an "excessively high standard of proof", but as a result of McDonald's decision "to restrict the evidence submitted".
The EUIPO therefore revoked McDonald's EUTM registration and awarded costs in Supermac's favour. McDonald's now has the option of appealing this decision.
Whether or not McDonald's go ahead with an appeal remains to be seen, but this outcome serves as a useful reminder to trade mark owners of the importance of preserving relevant documents in order to demonstrate genuine use of a mark, and highlights that no trade mark owner is immune from having their trade mark registration revoked if they fail to produce satisfactory evidence, regardless of how much they have actually used their mark in practice.
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