BIG MAC EU Trademark Revoked for Nonuse
In January 2019, the European Union Intellectual Property Office (EUIPO) upheld a revocation action[i] brought by Supermac’s (Holdings) Ltd against McDonald’s European Union trademark for BIG MAC. Supermac’s is a fast-food chain, operating exclusively in Ireland, which opened its first restaurant in 1978. The revocation action was filed in defense of McDonald’s oppositions against Supermac’s EU trademark applications for SUPERMAC’S for restaurant services in class 43. The BIG MAC trademark registration was revoked on the ground of nonuse. On the face of it, this is staggering. In 2013, in the U.K. alone, McDonald’s sold 91 million Big Mac sandwiches.[ii]
The decision serves to highlight that no matter how well known and widely used a trademark, there is no room for shortcuts when it comes to presenting evidence of use at the EUIPO. This article looks at EUIPO evidence requirements and provides recommendations on how to maintain EU trademark registrations.
The BIG MAC Case
The BIG MAC trademark registration covered a variety of goods and services in classes 29, 30, and 43, including foods prepared from meat, pork, meat sandwiches, preserved and cooked fruits and vegetables, eggs, cheese, milk, biscuits, bread, cakes, coffee, and services rendered or associated with operating and franchising restaurants. Supermac’s claimed that the registration had not been put to genuine use in the five-year period prior to the request for revocation.
In accordance with the statute, the rights of the proprietor of an EU trademark can be revoked on application to the EUIPO if the EU trademark has not been put to genuine use for a continuous period of five years. The use must relate to the goods and services for which the EU trademark is registered.
The onus was on McDonald’s to prove genuine use of the BIG MAC trademark, namely to show (1) actual use of the mark in relation to goods or services already or about to be marketed in the marketplace, (2) use that is not merely token but serves to preserve the rights conferred by the mark, (3) use consistent with the essential function of the trademark (a guarantee of the identity of the origin of goods and services), and (4) real commercial exploitation of the mark to maintain or create a market share.[iii]
McDonald’s claimed genuine use of the BIG MAC trademark in several EU member states. McDonald’s filed three affidavits from its representatives in Germany, France, and the U.K. In the affidavits, the representatives claimed sales of 1.4 billion Big Mac sandwiches across Germany, France, and the U.K. for the relevant period of time. The affidavits were filed together with examples of packaging, promotional brochures, printouts of advertising posters, printouts from various McDonald’s country websites, and a Wikipedia extract.
The EUIPO held that McDonald’s evidence was insufficient to establish genuine use.
While affidavits and other written statements drawn up by the interested parties, or their employees, are admissible as evidence, their value depends on the assessment of any independent evidence provided in support of those statements. Such assessment requires a consideration of all relevant facts and circumstances, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration, and frequency.
The independent evidence filed in support of the affidavits by McDonald’s employees failed to prove the extent of use of the BIG MAC trademark. Shortcomings in the independent evidence were highlighted as follows by the EUIPO:
- “[T]he mere presence of a trade mark on a website is, of itself, insufficient to prove genuine use unless the website also shows the place, time and extent of use or unless this information is otherwise provided. [T]he value of internet extracts . . . can be strengthened by evidence that the specific website has been visited and, in particular, that orders for the relevant goods and services have been made through the website.”[iv]
- “[T]here is no information provided about how these brochures were circulated . . . . Wikipedia entries cannot be considered as a reliable source of information, as they can be amended by Wikipedia’s users.”[v]
The decision serves as a stark reminder of the importance of properly prepared evidence in EUIPO proceedings, not only for lesser-known marks but also for well-known marks that were clearly used during the relevant period. McDonald’s has filed an appeal against the decision, which is pending. It remains to be seen whether the Board of Appeal follows the evaluation of the evidence.
Evidence Considerations before the EUIPO in Light of BIG MAC
As highlighted by the BIG MAC decision, the EUIPO cannot determine ex officio whether a trademark is genuinely used. The burden of proof is on the proprietor to show that the EU trademark is genuinely used. The use must be demonstrated by solid and objective evidence of effective and sufficient use of the trademark on the market concerned.[vi] The evidence alone must provide sufficient indication of (1) time, (2) place, (3) extent, and (4) nature of use in order to prove genuine use.
In a cancellation action, the time is determined by the request of the party filing the action. It can be any five-year period after registration of the EU trademark, and in general is five years prior to filing the cancellation request.
The evidence must show the use of the trademark in the territory where it is protected. The use of the trademark in non-EU territories will not be taken into account. The EUIPO will determine on a case-by-case basis whether the geographical dimension of the use is sufficient. At the moment, the use of an EU trademark in the U.K. or even in London and its immediate surroundings may be geographically sufficient.[vii] However, the use of an EU trademark in the U.K. after Brexit and the expiry of the transitional period (on December 31, 2020) will not count toward the use of an EU trademark.
If the earlier mark is a national trademark registered in one of the EU member states, use in that member state is sufficient provided that it is genuine use.
Extent of Use
The EUIPO will consider whether the owner has seriously tried to acquire a commercial position in the relevant market. According to the EUIPO Guidelines relating to proof of use, account will be taken of the commercial volume of all the acts of use and the duration of the period in which those acts of use occurred as well as their frequency.[viii] Thereafter, the EUIPO will make a decision on a case-by-case basis. The EUIPO Guidelines provide examples of sufficient[ix] and insufficient[x] use.
Nature of Use
The nature of use concerns the use of the trademark in accordance with its essential function, namely identifying the origin of the goods and services. The trademark must be used in public and not only internally. Use must be shown in relation to the goods and services for which it is registered. The evidence can include use in advertising and on the internet.
The EUIPO Guidelines relating to proof of use state that advertising carried out either in parallel to the marketing of goods and services or in advance of the actual marketing of goods and services if done to establish a market will constitute genuine use.[xi]
According to the EUIPO Guidelines, the value in terms of evidence of internet extracts can be strengthened by submitting evidence that the specific website has been visited. It is particularly important that orders for the relevant goods and services have been made through the website by a certain number of customers in the relevant period. For instance, useful evidence in this regard could be records that are generally kept when operating a business web page, such as records relating to the hits attained at various points in time or, in some cases, the countries from which the web page has been accessed. The date of use on the internet will be considered reliable where the website time-stamps each entry, indexing dates are given to the web page by search engines, or a screenshot of the website bears a given date.[xii]
Further Examples of How Evidence Should Be Presented
Evidence may consist of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and sworn or affirmed statements.
If written statements are supported by brochures, articles, or other marketing materials, it is important to include circulation figures, the relevant date or period of time, where the marketing materials have been distributed, and to whom.
Overly Broad Specifications
Given the breadth of the specification for the BIG MAC trademark registration, the decision also comes with a reminder not to apply for or register trademarks with an overly broad specification. Supermac’s argued that McDonald’s had not used the BIG MAC trademark in relation to all the goods and services covered by the registration.
In January 2020, the Court of Justice of the European Union (CJEU) handed down a decision in Sky v. SkyKick,[xiii] which deals with overly broad specifications, issues of unclear or imprecise terminology, and bad faith arguments when an applicant applies for goods and services without commercial logic.
The decision followed a 2019 opinion by the Advocate General (AG),[xiv] which held that while an EU trademark cannot be declared wholly or partially invalid on the sole ground that some or all of the terms in the specification of goods and services lack sufficient clarity and precision, those findings can be taken into account under the ground for refusal or invalidity that the registration is contrary to public policy.[xv]
The AG stated that “registration of a trade mark for ‘computer software’ is unjustified and contrary to the public interest because it confers on the proprietor a monopoly of immense breadth which cannot be justified by any legitimate commercial interest of the proprietor.”[xvi] It is noted that this practice is already recognized by the U.S. Patent and Trademark Office. The AG was also of the opinion that an application without any intention to use it in connection with the covered goods and services may, in specific circumstances, constitute bad faith. Finally, the AG also confirmed that the mark should only be declared invalid for the goods and services for which the ground applies.[xvii]
The CJEU did not follow the opinion of the AG fully and held that the inclusion of broad terms such as “computer software” is not contrary to public policy. However, the lack of intention to use the mark could amount to bad faith where there is no rationale for the application.[xviii]
- The approach adopted by the EUIPO in the assessment of evidence of trademark use does not vary between lesser-known and well-known trademarks. No matter how well known or extensively used a trademark is, the evidence alone must be sufficient to convince the EUIPO that there has been genuine use.
- Independent third-party evidence in the form of witness statements by professional associations, chambers of commerce, suppliers, customers, or business partners is given more weight.
- If third-party evidence is not available and internal statements are to be relied upon, they must be supported by sufficient persuasive evidence, such as invoices, orders, and shipping data.
- Copies of brochures and marketing materials must be provided with references to the publication date, print numbers, circulation figures, and means of circulation.
- Website extracts on their own are not considered reliable evidence but would be given more weight if time-stamped and accompanied by statistics about website traffic listing hits and clicks from EU member states.
- It would be helpful to provide clear guidelines to clients of what is required, but also remind them always to question the source and reliability of the materials.
[i]. Cancellation No. 14 788 C (Revocation), Supermac’s (Holdings) Ltd v. McDonald’s Int’l Prop. Co. (EUIPO Jan. 11, 2019).
[ii]. Harry Wallop, 15 Fascinating Facts about McDonald’s in UK, Telegraph (Nov. 12, 2014), https://www.telegraph.co.uk/foodanddrink/11223308/15-Fascinating-facts-about-McDonalds-in-UK.html
[iii]. Case C-40/01, Ansul BV v. Ajax Brandbeveiliging BV, 2003 E.C.R. I-2458.
[iv]. Cancellation No. 14 788 C (Revocation), at 5.
[v]. Id. at 5–6.
[vi]. Case T-382/08, Advance Magazine Publishers, Inc. v. Office for Harmonisation in the Internal Mkt., 2011 E.C.R. II-2, ¶ 22.
[vii]. Case R 234/2012-2, Now Wireless Ltd v. Starbucks (HK) Ltd (EUIPO Bd. App. Mar. 7, 2013).
[ix]. Id. pt. C, § 6, ¶ 2.6.3.
[x]. Id. pt. C, § 6, ¶ 2.6.2.
[xi]. Id. pt. C, § 6, ¶ 220.127.116.11.
[xii]. Id. pt. C, § 6, ¶ 18.104.22.168.
[xiii]. Case C-371/18, Sky plc v. SkyKick UK Ltd, ECLI:EU:C:2020:45 (Jan. 29, 2020) [hereinafter SkyKick CJEU].
[xiv]. Case C-371/18, Sky plc v. SkyKick UK Ltd, ECLI:EU:C:2019:864 (Oct. 16, 2019) [hereinafter SkyKick AG].
[xv]. See Council Regulation 2017/1001, art. 7(1)(f), 2017 O.J. (L 154) 1, 8.
[xvi]. SkyKick AG, supra note 14, ¶ 79.
[xvii]. Id. ¶ 143.
[xviii]. SkyKick CJEU, supra note 13, ¶ 75.
©2020. Published in Landslide, Vol. 12, No. 5, May/June 2020, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.
This article, prepared by Janette Hamer, is for informational purposes only and does not constitute legal advice. Please, therefore, get in touch with your usual Forresters Attorney if you need further advice.