18 January 2019

Big Mac – Big Mistake. How did McDonald’s lose rights in BIG MAC?

On 15 January 2019, the European Union Intellectual Property Office (“EUIPO”) cancelled one of McDonald’s EU trade mark registrations. This was not just any old mark, the EUIPO cancelled McDonald’s EU registration no. 62638 for “BIG MAC”.

The cancellation was requested by Irish company Supermac’s (Holdings) Ltd (“Supermac”), which claimed that McDonald’s had used the mark to block Supermac’s expansion in Europe. Supermac requested the cancellation on the basis that McDonald’s had not used the mark “BIG MAC” within the EU in the preceding five years.

An EU registered mark can be cancelled if the mark has not been put into genuine use within the EU during a continuous period of five years following its registration date, or any other continuous period of five years after that. If the mark has been used only in relation to some of the goods and services it will be maintained but only in relation to the goods and services for which use has been proven.

McDonald’s mark was registered on 22 December 1998 and Supermac argued it had not been used in the five-year period of 11 April 2012 to 10 April 2017. McDonald’s had to show genuine use of the BIG MAC mark within the EU during that period, and in the EUIPO’s eyes it failed to do so. So what went wrong?

At first the decision is not as surprising as the newspapers’ headlines have made of it. The mark was registered for a broad variety of goods, such as “cooked fruits and vegetables, eggs, cheese, milk, pickles, desserts”. It was also protected for services such as “construction planning and construction consulting for restaurants for others”. McDonald’s may be selling or providing these goods and services but, to an external observer, it seems doubtful they are sold or provided under the “BIG MAC” brand name. As a result, the fact that the EUIPO decided no genuine use of the mark had been proven for these goods and services, is not surprising.

However, the “BIG MAC” mark was also protected for products such as “meat sandwiches”; yet, the EUIPO decided that no genuine use had been proven. The wording “meat sandwiches” is sufficiently broad to include meat burgers and it seems evident to an observer that McDonald’s uses the mark “BIG MAC” for this type of product. The Big Mac is one of the most prominent items on their menu and one of their oldest burgers. In fact, even Supermac seemed to acknowledge this fact, arguing that the evidence submitted was insufficient to prove genuine use for anything, other than sandwiches; yet the EUIPO considered that the evidence was insufficient, even for sandwiches.

McDonald’s submitted three affidavits signed by company representatives in France, Germany and the UK claiming significant sales of Big Mac sandwiches. It also submitted brochures, printouts of posters and printouts from several McDonald’s websites. It also provided a copy of a Wikipedia page, providing information about the Big Mac. The EUIPO dismissed the evidence as insufficient.

The EUIPO accepts affidavits provided from within a trade mark owner’s organisation but it reminded McDonald’s that these documents are “generally given less weight than independent evidence”. More importantly, it took the view that the content of the affidavits was not supported by the other items of evidence. The website printouts showed the mark but no evidence was provided to show the number of people visiting these websites, or that orders for the relevant goods/services had actually been made through these websites. As a result, no connection could be made between these websites and the sales claimed in the affidavits. In terms of the brochures and posters, there was no indication as to the extent to which they had been circulated, who they were offered to and whether they led to any potential or actual purchases. The Wikipedia page was dismissed as unreliable source of information on the basis that it can easily be edited.

As a result, the EUIPO decided to cancel the registration in its entirety, effective as of the date of application for revocation, 11 April 2017. The decision may seem harsh and surprising, knowing that the Big Mac is one of McDonald’s most notorious burgers. However, it shows that even if a mark seems incredibly well-known (as one could argue about BIG MAC); if it is attacked on the basis of non-use, the trade mark owner must ensure that the evidence submitted is compelling.

In particular, trade mark owners should ensure that the evidence establishes the place, time, extent and nature of use of the contested mark for the goods and/or services covered. Trade mark owners should not rely too much on affidavit evidence from within their organisation and instead try to submit supporting evidence that comes from independent sources (for instance, copies of ads published in dated newspapers/magazines). Evidence of actual sales (invoices, receipts) is also important. Finally, advertising materials should show, or be accompanied with evidence showing, where, when and to how many people they were distributed.

So what next? McDonald’s has said that it intends appealing the decision and one suspects it may be able to reverse the decision in relation to “meat sandwiches” at least. The author is not privy to the dispute between McDonald’s and Supermac but, irrespective of whether McDonald’s succeeds with an appeal or not, it owns other registered marks for “BIG MAC”. Furthermore, it has surely built-up goodwill through use in the name in common-law countries, such as the UK and Ireland, and should still be able to stop third parties from using the name BIG MAC (or a similar one) through the tort of passing-off. As a result, it still very much owns rights in the mark. Some of the press articles claiming that McDonald’s had lost the exclusive rights to its Big Mac name are, therefore, way off the mark.

For trade mark owners this case shows how crucial it is that they should be prepared in the event that one of their trade mark registration is attacked on the basis of non-use. In the case of a cancellation action evidence of use dating back to five years will be required and this can prove difficult. Evidence of use should be collected, reviewed and kept on a regular basis. Trade mark owners should also monitor how their registered marks are actually used and if, for some reason, the mark is used for specific goods/services but not for others, consider their strategy as a whole to ensure that they have adequate protection.