Introduction

The European Intellectual Property Office (the “EUIPO”) has revoked McDonald’s ‘BIG MAC’ word mark in its entirety with effect from 11 April 2017.

Galway based Supermac’s sought to have the ‘BIG MAC’ word mark revoked on the basis that the mark had not been put to genuine use during a continuous period of five years following the date of registration and there were no proper reasons for non-use (Article 58(1)(a) of the European Union Trade Mark Regulations).

The EUIPO Decision

McDonald’s submitted various pieces of evidence to prove use of their ‘BIG MAC’ word mark, including, affidavits, brochures, printouts from McDonald’s websites and printouts from Wikipedia.org.

The EUIPO however found the evidence to be insufficient to establish genuine use of the word mark stating that their decision depended on an overall assessment of the extent of use of a trade mark. In assessing the extent of use several evidential factors must be considered, namely, the characteristics of the market concerned, the nature of use, the territorial extent of use and the commercial volume, duration and frequency of use.  The EUIPO held that these evidential factors are interdependent and cumulative in the overall assessment – failure to meet one will result in the evidence being rejected for insufficiency.

The EUIPO also stated that McDonald’s failed to show “brick-and-mortar” operations or transactions to evidence whether or how a purchase could be made, or an order placed, and no decisive information that the products marked with the ‘BIG MAC’ word mark were offered for actual sale. 

In summary, McDonald’s evidence was deemed too limited and insufficient to prove that the word mark was genuinely used in the relevant territory during the five-year period and Supermac’s application for revocation of the mark in its entirety was successful. McDonald’s must also bear the costs of the revocation proceedings.

Key Points

This decision serves as a reminder to trade mark proprietors that the mere presence of a trade mark on a website or promotional materials is insufficient to prove genuine use unless it can also show the place, time and extent of use in connection with the mark in question, and more particularly, the commercial value of the use of the mark. 

Contributed by: Florence Meagher

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