Trademarks and use: a commentary on the Big Mac case

Everyone is talking about it, but what actually happened? Has the fast food giant, McDonald’s International Property Company Ltd. (“McDonald’s”), really lost its rights to the BIG MAC trademark?

Paris, February 14, 2019 – Everyone is talking about it, but what actually happened? Has the fast food giant, McDonald’s International Property Company Ltd. (“McDonald’s”), really lost its rights to the BIG MAC trademark?

Preliminary reminder of trademark law: Within 5 years of registration of a trademark in the European Union, the rights holder must be able to prove the genuine use of his trademark, in the territory of the European Union, for the products and services which are designated. Failing that, a third party could obtain its revocation within the framework of non-use cancellation proceedings.

This is precisely the type of proceedings brought on April 10, 2017 by the company Supermac’s (Holdings) Ltd, an Irish fast-food chain, in conflict with the McDonald’s company despite a long period of tacit coexistence.

In response to cancellation proceeding, McDonald’s was required to demonstrate the genuine use of its BIG MAC trademark, registered since December 22,1998, in the territory of the European Union, for products and services designated in classes 29, 30 and 43.

Who would have thought that McDonald’s would fail to demonstrate the genuine use of its well-known BIG MAC brand for sandwiches and restaurant franchise services? However, this was indeed the decision of the Cancellation Division of EUIPO on January 11, 2019!

To understand this, bear in mind that the genuine use of a European Union trademark is assessed in light of all of the facts and circumstances designed to establish whether the exploitation is real in the territory of the European Union in the 5 years preceding the cancellation proceeding. To this end, evidence must establish the place, date, intensity and type of use, each of which must be justified.

However, McDonald’s provided: 

  • affidavits signed by McDonald’s representatives in France, Germany and the United Kingdom claiming that sandwich sales were significant,
  • brochures and advertising posters showing sandwiches on a menu and their packaging accompanied by a price,
  • excerpts from their websites in 18 European countries showing the BIG MAC burger and
  • a Wikipedia article on the BIG MAC sandwich.

In what way was this evidence considered to be insufficient?

While affidavits are, indeed, evidence with a certain probative force, this was weakened by the fact that they were signed by representatives of the trademark owner or employees. As a result, such attestations must be corroborated by additional evidence from sources external to the company.

Although some of the additional evidence provided does indeed show a use for the products covered by the trademark (at least the sandwiches), at dates corresponding to the period during which the use in the territory of the European Union was to be proven, McDonald’s did not produce any information relating to the intensity of this use. Intensity is evaluated according to the type of product/service, and the corresponding sales volume, duration and frequency. It was found that the documents provided (brochures, posters, menus, packaging) did not allow the sales and turnover amounts mentioned in the affidavits to be determined. As for the excerpts from the various websites, the number of visits, places and periods of offers were not provided. Finally, the credibility of the Wikipedia article was challenged as it can be changed by users.

It thus appears that a link was missing between the information contained in the affidavits and the various additional documents, and that information proving the quantity of products actually offered and sold was not sufficiently supplied.

In such non-use cancellation proceedings, it is therefore important not to rest on the laurels of the renown of one’s product but to be extremely rigorous with regard to the evidence provided to ensure that it meets all of the necessary criteria to prove genuine use of products and services within the European Union.

We are, of course, at your disposal to assist you in such proceedings, to help you to preserve the relevant evidence well in advance, or to develop arguments enabling you to respond effectively to this type of proceedings, which are expected to multiply in the coming years within the framework of the PACTE law transposing European Directive No. EU 2015/2436 on the modernization of trademark law, which renders such proceedings more accessible.

BIG MAC fans and trademark rights holders be reassured! McDonald’s will most likely appeal this decision and will certainly try to complete its evidence of use. In addition, it had the good idea to re-register its trademark on October 6, 2017 (this new trademark is therefore not yet subject to the obligation of use), i.e. 6 months after the start of the proceeding by opposing party… Other oppositions and proceedings between McDonald’s and Supermac’s are also in progress. A new saga begins, as often happens in trademark law.

A case to follow!

Published by

Caroline Huguet-Braun

Head of the Rennes Office