BIG MAC – dangers in overzealous trade marks enforcement

Trade marks registration gives proprietors exclusive rights to use their trade marks in relation to registered goods and/or services.

The quid pro quo is that after an initial five-year grace period proprietors must put their trade marks to use in the course of trade (“genuine use”) for those registered goods and/or services.

If a registered trade mark is not put to genuine use within five years of registration and/or for continuous periods of five years thereafter, the trade mark registration is liable to be revoked in whole or in part for those of the registered goods and services for which no genuine use has been shown.

McDonald’s was amongst the first organisations to take advantage of the EU Trade Marks registration system newly introduced in 1996.

BIG MAC was applied for on 1 April 1996 for use as a trade mark in the EU in respect of a number of foodstuffs, and customer-facing and business to business restaurant services.  BIG MAC was registered as an EUTM for those goods and services on 22 December 1998.

On 11 April 2017, Supermac, an Irish fast-food competitor applied to the EU Intellectual Property Office (“EUIPO”) to cancel the BIG MAC EUTM for non-use, apparently in a longstanding trade marks dispute between the parties.

The alleged non-use period was 2012 – 2017, and the EUIPO Cancellation Division revoked the BIG MAC registration in its entirety as from 1 April 2017, finding that McDonald’s had not adduced evidence to show the extent of use in the EU of the BIG MAC mark.

That decision was partially overturned on a first appeal to the EUIPO Board of Appeal, and McDonald’s were allowed to retain their registration for meat and poultry products, edible sandwiches, meat sandwiches and chicken sandwiches, and customer-facing restaurant services.

Supermac appealed the outcome of that first appeal to the General Court (“GC”) of the EU Court of Justice (“CJEU”).

Whilst Supermac were prepared to concede that McDonald’s had made genuine use of BIG MAC in relation to meat sandwiches, Supermac challenged that McDonald’s had established genuine use in relation to the remaining goods and services permitted by the EUIPO Board of Appeal.

The GC dismissed Supermac’s appeal in relation to meat products and edible sandwiches; McDonald’s proof of use for meat sandwiches sufficed to maintain the arguably wider terms.

As for chicken sandwiches, McDonald’s had put in evidence of advertising in France from 2015 – 2016 offering a GRAND BIG MAC CHICKEN burger.  In the absence of dissemination and marketing information, sales figures, etc., that evidence was ruled by the GC insufficient to prove that any use of BIG MAC in relation to chicken sandwiches (and it followed poultry products) was “real”.

Furthermore, no use of BIG MAC in the relevant period had been shown for customer-facing restaurant services.

The upshot was that, although the McDonald’s BIG MAC EUTM remains on the EUTM Register for meat products, edible sandwiches and meat sandwiches (subject to any appeal to the CJEU on points of law only), the rest of the registration was wiped out.

Humphreys Law are specialists in trade marks prosecution, maintenance and enforcement.  If you have any questions or issues concerning the above, contact a member of our team.

This piece was written by Tristan Morse and Robert Humphreys.

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