The EUIPO Fourth Board of Appeal (the "Board") has partially annulled its previous decision to revoke McDonald's "BIG MAC" mark.
Following the long-running saga between the US fast-food giant and an Irish family-owned burger chain, Supermac's, McDonald’s has, on its second attempt, submitted sufficient evidence of genuine use of BIG MAC to partially annul the 2019 decision, which revoked the mark in its entirety (see our January 2019 blog: Supermac's takes BIG MAC off the menu | Fieldfisher).
The dispute dates back to 2017 when Supermac’s (Holdings) Ltd applied to revoke McDonald’s’ registration for all goods and services in Classes 29, 30 and 42 (detailed below) on the grounds that it was not put to genuine use for a continuous period of five years following the date of registration in relation to any of the registered goods and services.
Class 29 - Foods prepared from meat, pork, fish and poultry products, meat sandwiches, fish sandwiches, pork sandwiches, chicken sandwiches, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles, desserts;
Class 30 - Edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar;
Class 42 - Services rendered or associated with operating and franchising 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; the designing of such restaurants, establishments and facilities for others; construction planning and construction consulting for restaurants for others.
In January 2019, the EUIPO Cancellation Division revoked the BIG MAC mark, holding that the evidence of use submitted by McDonald's was inadequate to prove use of any of the goods and services. It was highly critical of the evidence submitted. McDonald's sought to address this by submitting around 700 pages of further evidence during the appeal, including consumer surveys, Google Analytics data, online articles regarding the 'Big Mac Index' and a financial audit report. The Board carefully considered this evidence and its admissibility, working its way methodically through the law and the evidence (the decision is worth a read for a reminder of these). It held that the further evidence was admissible, and that the evidence McDonald's had submitted at the Cancellation Division stage had in fact been sufficient to prove use of some of the goods and services. The Board specifically held that "the probative value of the affidavits [which the Cancellation Division had largely rejected] is supported by all the other evidence".
The Board examined the "four factors relevant for the assessment of the genuine use of the contested mark", being place, time, nature and extent of use.
It noted that the list of goods in class 29 was separated by commas rather than semicolons, and took a few paragraphs to justify its decision to read the specification as if it were separated by semicolons. This was significant as it meant that McDonald’s was claiming registration for individual ingredients of the composite sandwich, and this was rejected, as the ingredients did not serve to designate origin.
McDonald’s did however successfully argue that BIG MAC had been "used in such a way that it did not only identify the specific sandwich provided by the EUTM proprietor, but the use of ʻBig Macʼ was intended to distinguish the restaurant services provided by the EUTM proprietor from similar services of third parties". It could therefore retain restaurant services.
In conclusion, the Board considered McDonald's' appeal to be partially well-founded and held that sufficient evidence had been provided to retain the following goods and services:
Class 29 - foods prepared from meat and poultry products, meat sandwiches, chicken sandwiches;
Class 30 - edible sandwiches, meat sandwiches, chicken sandwiches;
Class 42 - 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.
As to the remaining goods and services covered by the registration, McDonald's was unsuccessful, having that part of its appeal dismissed. This recent decision can be appealed further, to the General Court, although it seems unlikely McDonald’s would have much, if anything, to gain from that.
This case demonstrates just how complex it can be to provide adequate evidence of genuine use. Indeed, irrespective of how well-known a mark may be, brand owners cannot assume that proving genuine use will be straightforward; nothing will be assumed and everything must be proven. It is prudent to regularly gather documents showing use of a trade mark to be able to defend any non-use cancellation actions, should they arise. Brand owners should also be mindful to file evidence from both within their organisation and independent sources and any evidence should establish the place, time, extent and nature of use of the mark.
The case also illustrates the difficulties of proving use across the totality of a specification, and serves as a warning to brand owners to consider applying for focused rather than broad specifications and to exclude goods and services which are unlikely to be used. We expect further guidance on these issues from the Supreme Court in June 2023 when it hears the appeal in Sky v SkyKick (in which Fieldfisher is acting for the Appellant).
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