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At the end of 2022 the EUIPO Board of Appeal annulled the 2019 decision to revoke McDonald’s BIG MAC mark and allowed the mark to remain on the register (Case R534/2019-4).
Background to the case
Supermac’s is a popular Irish chain of restaurants dating back to 1978. In 2017, Supermac’s Holdings Ltd (Supermac’s) filed two EU Trade Mark Applications for the mark SUPERMAC’S which McDonald’s International Property Company Ltd (McDonald’s) opposed arguing likelihood of confusion with its BIG MAC mark. Supermac’s responded to this by filing a non-use revocation action against McDonald’s BIG MAC EU Trade Mark No. 62 638 which covered a number of food and retail goods and services.
The initial cancellation decision
In order to prove use of the BIG MAC mark in the EU, McDonald’s filed three Affidavits from employees in their main EU markets at that time, Germany, France and UK. The Affidavits attested to the significant sales figures of the franchise’s signature burger along with promotional material and brochures. They also exhibited website printouts and Wikipedia pages all showing use of the mark.
In Supermac’s response to the evidence, they acknowledged that the evidence showed use on “a sandwich including a beef patty, lettuce, cheese, pickles, onions and a special sauce” but not the other registered goods and services. However, the EUIPO denied all of the evidence of use. They were highly critical of the evidence submitted deciding it did not ‘provide conclusive information’ regarding the sale of the products bearing the mark or any evidence of any of the registered services being provided under the mark. In particular, the EUIPO highlighted Wikipedia as an unreliable source and that promotional material filed alongside the employee Affidavits and hand-dated marketing materials were insufficient as an independent sources of evidence. They criticised a lack of detail overall regarding the place, time and extent of use of the mark that could have been remedied by use of independent evidence and website data analytics.
As a result, the non-use revocation action was successful and McDonald’s BIG MAC mark was wholly revoked from April 2017.
Decision from the Board of Appeal
Following the revocation decision, McDonald’s filed an appeal requesting the entire decision be set aside. In this, McDonald’s argued the volume of advertising material submitted attested to the extent of use and that the webpages and Wikipedia extracts were reliable evidence.
Additionally, McDonald’s filed far more substantive evidence including consumer surveys showing public knowledge and awareness of the mark, a number of online newspaper and magazines referencing the Big Mac brand, copies of receipts, menus, advertising material, adverts, and website analytics.
Supermac’s objected to the admissibility of the additional evidence however the Board of Appeal accepted McDonald’s submissions stating they were merely supplementing and building on the evidence previously submitted.
In conclusion, the Board of Appeal found there was sufficient evidence to show the BIG MAC mark is in use. Albeit not allowed for its full, originally granted specification, the BIG MAC EU Trade Mark now covers the following:
Foods prepared from meat and poultry products, meat sandwiches, chicken sandwiches.
Services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive- through facilities; preparation of carry-out foods.
Additionally, the Board of Appeal found the mark was not used only to identify a sandwich as Supermac argued in their submissions but to promote the McDonald’s business as a whole and therefore used in relation to the services in Class 42.
Even for trade marks that may be thought of as household names, it is important to provide as detailed evidence of use as possible in the first instance and in particular from independent sources. Depending on the nature of the product, use of data analytics may provide a useful and fairly readily available source of independent evidence. The parties in this case still have outstanding actions, with EU Supermac’s marks still under opposition.
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