On 11 January 2019, the Cancellation Division of the European Union Intellectual Property Office ("EUIPO") upheld the application for revocation filed by Supermac's Holdings Ltd ("Supermac's") against the 'BIG MAC' trade mark registered by McDonald's International Property Company Ltd ("McDonald's").
McDonald's had registered its 'BIG MAC' trade mark on 22 December 1998 for goods and services of Nice Classes 29, 30 and 42 covering, inter alia, sandwiches, desserts and services rendered or associated with operating and franchising restaurants, including the preparation of carry-out foods. Supermac's filed its request for revocation on 11 April 2017 and argued that McDonald's' trade mark had to be revoked in its entirety. Supermac's based its claim on Article 58(1)(a) of Regulation 2017/1001 of 14 June 2017 on the European Union trade mark (the "Regulation"), arguing that McDonald's had not, over a continuous period of five years, put the trade mark to genuine use in the European Union for the goods or services for which it was registered.
In response to the application for revocation, McDonald's submitted evidence of use such as advertising brochures, packaging, excerpts from websites and affidavits. While acknowledging that the evidence adduced was sufficient to prove genuine use of the trade mark for sandwiches, Supermac's claimed that it did not cover use for any other good or service.
In its decision of 11 January 2019, the EUIPO first recalled that genuine use of a trade mark required actual use of the trade mark on the market of the goods or services for which it is registered in accordance with the essential function of the trade mark, i.e., guaranteeing the identity and origin of such goods or services. The EUIPO added that it had to assess whether or not the commercial exploitation of the trade mark was real and that, in proceedings such as those at issue, it was for the trade mark proprietor to prove genuine use of its trade mark within the European Union or to submit proper reasons for non-use.
The EUIPO then moved on to analyse the evidence put forward by McDonald's to prove genuine use.
First, McDonald's had submitted three affidavits signed by representatives of McDonald's companies claiming significant sales figures for the BIG MAC sandwiches. In this respect, the EUIPO held that affidavits were insufficient in themselves to prove genuine use of a trade mark, especially since these affidavits emanated from interested parties. Such type of evidence, the EUIPO stated, had to be supported by other types of evidence.
In addition, McDonald's had produced printouts from the McDonald's websites. The EUIPO noted that while these websites' excerpts showed that products bearing the trade mark had been offered to the public, these were insufficient to prove the extent of the trade mark's use. In particular, the EUIPO specified that the evidentiary value of these excerpts could have been strengthened if they could show that the specific website had been visited or that orders were placed for the relevant products by a specific number of customers in the relevant period and in the relevant territory. However, none of these elements had been provided by McDonald's.
Similarly, McDonald's had submitted brochures and printouts of advertising posters as well as packaging for sandwiches (boxes). According to the EUIPO, the packaging materials and brochures, while depicting the trade mark, did not provide any information on how these brochures had been circulated, to whom they had been offered and whether or not these had led to any purchases. Additionally, the EUIPO held that there was no independent evidence submitted that could show how many of the products for which the packaging had been used were actually offered for sale or sold. It therefore concluded that there were insufficient details regarding the extent of use of the trade mark other than exhibitions of the sign. These did not give any data on the real commercial presence of the 'BIG MAC' trade mark for the goods and services concerned. The EUIPO furthermore did not consider the printout from the 'Wikipedia' website as reliable because Wikipedia entries can be modified by any user.
Finally and remarkably, the EUIPO held that Supermac's acknowledgement of the evidence submitted by McDonald's was sufficient to establish genuine use of the trade mark with respect to sandwiches but was not relevant for its assessment and did not have any effect on its own findings. The EUIPO recalled that it had to conduct its assessment independently.
To conclude, the EUIPO held that the documents submitted by McDonald's did not constitute conclusive information that the products marketed under the trade mark were offered for actual sale, in the absence of any confirmation of any commercial transactions. According to the EUIPO, it followed that McDonald's did not prove that its 'BIG MAC' trade mark had been genuinely used during the relevant period for the relevant goods or services. As a consequence, the EUIPO decided to revoke the trade mark in its entirety.
McDonald's intends to appeal the decision to the EUIPO Board of Appeals.
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