Details of the case
Fast food chain Supermac's, founded in 1978, has more than 100 restaurants in Ireland. Supermac's plans included expanding into the rest of Europe, and though the company has a trademark in Ireland, it did not have a European trademark. In 2015, Supermac's filed for a European-wide trademark, but it was objected to by McDonald's. McDonald's claimed that the branding of Supermac's was too similar to its "Big Mac" trademark.
In 2017, Supermac's made another registration attempt, which led to a new objection from McDonald's. In order to fight that ruling, Supermac's had to formally submit a request to the European Union Intellectual Property Office (EUIPO) to cancel McDonald's trademark for "Big Mac" in its entirety, arguing that it was not being put to genuine use during a continuous period of five years following the date of registration in relation to any of the registered goods and services.
In support of its registration, McDonald's submitted statements signed by representatives of McDonald's in the UK, France and Germany; brochures and printouts of advertising materials; printouts from their own websites. The statements contained some sales figures showing that McDonald's sold over 1.4 billion Big Macs in the UK, France and Germany between 2011-2016. However, the EUIPO stated that the evidence was not sufficient to show that the trademark had been put to genuine use. The type of evidence submitted, in particular, the statements submitted by representatives of McDonald's was of only limited value. Furthermore, all of McDonald's evidence referred to the food, and none of the evidence referred to restaurant services(i.e. using "Big Mac" for restaurants and not just food items). As a result, the Cancellation Division upheld Supermac’s application to revoke McDonald's trademark.
In January 2023, contrary to the Cancellation Division (CD)’s decision and after accepting additional evidence, the Board of Appeal (BoA) concluded that the EUTM proprietor showed the use of its word trademark ‘BIG MAC’ for some of the goods and services it is registered for, namely foods prepared from meat and poultry products (Class 29), sandwiches (Class 30), services associated with operating restaurants, drive-through facilities and preparation of carry-out foods (Class 42).
Genuine use in the EU trademark law
According to Article 58(1)(a) EUTMR, the rights of the proprietor of the European Union trade mark will be revoked on application to the Office, if, within a continuous period of five years, the trademark has not been put to genuine use in the Union for the goods or services for which it is registered, and there are no proper reasons for non-use. Genuine use of a trademark exists where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use requires actual use on the market of the registered goods and services and does not include token use for the sole purpose of preserving the rights conferred by the mark, nor use which is solely internal.
In revocation proceedings based on the grounds of non-use, the burden of proof lies with the EUTM proprietor as the applicant cannot be expected to prove a negative fact, namely that the mark has not been used during a continuous period of five years. Therefore, it is the EUTM proprietor who must prove genuine use within the European Union, or submit proper reasons for non‑use. The Cancellation Division ruled that evidence submitted by Mcdonald's does not provide sufficient details concerning the extent of use; other than exhibiting the sign in relation to goods which could be considered to be part of the relevant goods, these materials do not give any data for the real commercial presence of the EUTM for any of the relevant goods or services.
Contrary to this decision, the Board of Appeal (BoA) found that the three affidavits submitted by Mcdonald's in the cancellation proceedings cannot be disregarded as merely internal documents deriving from the EUTM proprietor. With regard to the extract from Wikipedia, the BoA points out that it contains many references and external links, including references to reputable sources such as articles in known newspapers and magazines. Therefore, it has confirmatory value. The evidence also shows that the 'Big Mac' as a product is widespread and macroeconomically so significant that it is used as a benchmark for comparing the cost of living in different countries – the 'Big Mac Index' – and that various advertising materials confirm that 'Big Mac' is promoted as an integral part of the restaurant services. Considering this, the BoA finds that the evidence submitted shows that the EUTM ʻBIG MACʼ was used to identify a specific food item and promote the food provider. 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.
