The Fourth Board of Appeal of the EUIPO has overturned the decision of the Cancellation Division after accepting additional evidence, and concluded that the BIG MAC trade mark was not only used to identify a specific sandwich, but also to promote the food provider.
McDonald's therefore prevails against Supermac's in this dispute initially raised in 2017.
At the appeal stage, McDonald's submitted various additional evidence to prove the extent of use of their mark, including:
- Consumer surveys showing that the degree of the awareness of the term ʻBig Macʼ in relation to McDonald's fast food products is on extremely high level for the general public in Germany;
- Copies of receipts and/or excerpts from electronic cash registers from several ʻMcDonald'sʼ restaurants, all of which demonstrate the actual sale of ʻBig Macʼ sandwiches;
- A financial audit report containing:
- information on the ʻBig Macʼ units sold on the relevant local market in Germany and the United Kingdom and in France,
- (ii) confirmation that ‘Big Mac' units sold from the UK, German and French reporting system were equal to or exceeded data provided in the affidavits submitted; and
- (iii) information on the movement of ʻpoint of saleʼ (ʻPOSʼ) data from restaurant cash registers to the EUTM proprietor's financial reporting systems
- A letter of confirmation provided by the representative of a German employers' and trade association in the restaurant chain sector, in particular that the ʻBig Macʼ hamburger is one of their best-selling and most significant core products and has represented McDonald's long-standing hamburger tradition like no other product for many years or even decades;
- Articles on the use of the ʻBig Mac Indexʼ since 1986 as a model of consistency because it is produced ʻin nearly identical fashion across more than 36 000 restaurants in over 100 countriesʼ;
- Advertising material and affidavits related to advertising expenditure in relation to the contested mark, supported by the specific advertising campaigns attached as screenshots;
- Photographs of original packaging used in relation to the ʻBig Macʼ product and photographs of menus used in McDonald's restaurants, comprising ʻBig Mac®ʼ as one of the sandwiches offered at McDonald's;
- Evidence of marketing efforts, with advertisements, social media accounts, promotional YouTube videos and articles from the reputed UK newspapers and websites.
The Board of Appeal found that such evidence confirms that ʻBig Macʼ is the flagship burger of the EUTM proprietor's fast-food chain and as an emblematic sandwich sold globally and representing a model of consistency it is used as the basic unit of ʻBig Mac Indexʼ to measure purchasing power parity between currencies.
This case highlights the importance not only of documenting your trade mark use, but of correctly collating and submitting the appropriate type and amount of evidence in order to prove genuine use of your mark in relation to all relevant goods and services.
Get in touch with a trade mark attorney to ensure that you are in the strongest position to maintain your trade mark rights - and unlike some - to get it right the first time round!
Taking this into consideration, the BoA finds that the evidence submitted shows that the EUTM ʻBIG MACʼ was not only used to identify a specific sandwich, but also to promote the food provider. In particular. the BoA notes that the ʻBig Macʼ sandwich cannot be bought in any other restaurant than at the EUTM proprietor's establishments (McDonald's). It is apparent from the evidence submitted that the contested trade mark was used in such a way that it did not only identify the specific sandwich provided by the EUTM proprietor but was also intended to distinguish the restaurant services provided by the EUTM proprietor from similar services of other providers.
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