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In another win for Irish company Supermac's in its ongoing war with McDonald's, it has partially invalidated McDonald's EUTM no. 10392835 'Mc' for non-use.
Similar to the last decision where the EUIPO invalidated McDonald's EUTM for BIG MAC (see our previous blog – Supermac's takes BIG MAC off the menu), the EUIPO held that McDonald's provided insufficient evidence to claim use of the mark for all of the goods claimed under the mark. The 'Mc' EUTM has been cancelled for a number of goods in classes 29, 30, 32 and 43. McDonald's was still able to keep its 'Mc' registration for chicken nuggets in class 29 and edible sandwiches, meat, pork, fish and chicken sandwiches in class 30.
Unfortunately, the decision in the BIG MAC case was handed down after evidence for this matter was filed. The evidence filed was quite similar to that which was deemed insufficient in the BIG MAC case, therefore McDonald's could not correct its evidence deficiencies for this case. In this case McDonald's filed affidavits which set out annual revenue reports for Europe from years 2012-2014 but did not show dates, place, sales figures and extent of use.
Supermac's argued that the 'Mc' prefix should not be allowed as it:
- was only filed as a defensive mark;
- was a common prefix for surnames; and
- McDonald's never used it on its own, and the way it is used, i.e. for its burger names, changes the distinctive character of the mark.
The EUIPO agreed that there was no evidence of use of the 'Mc' mark on its own, only accompanied by other elements.
Comment
This case once again highlights the fact that the evidence requirements to show use of a mark are not particularly onerous but that it must be of a kind which shows the extent of use externally both by the trade mark owner and by third parties.
McDonald's has filed an appeal against the BIG MAC decision and it is likely to do so here as well. We will follow these cases and advise as to the outcome of the appeals.