Supermac's takes BIG MAC off the menu

The EU Intellectual Property Office recently handed down its decision in the case of Supermac's (Holdings) Ltd v McDonald's International Property Company Ltd and effectively took the mark 'Big Mac' off the trade mark menu.

The EU Intellectual Property Office (EUIPO) recently handed down its decision in the case of Supermac's (Holdings) Ltd v McDonald's International Property Company Ltd and effectively took the mark 'Big Mac' off the trade mark menu.

Background

In the 1960s a young Irish teenager named Pat McDonagh earned the nickname Supermac after a match-winning performance in a Gaelic football match. He went to open a restaurant in 1978 and named it Supermac's. There are now over 106 Supermac's across Ireland and Northern Ireland.

In 1996 McDonald's filed EU trade mark no. 62638 for BIG MAC for the following goods and services:

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.

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.

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.

McDonald's tried to prevent Supermac's from expanding beyond Ireland arguing that the similarity between the mark BIG MAC and Supermac's would confuse customers. Supermac's instead commenced a revocation action in the EUIPO to cancel the trade mark BIG MAC for non-use.

Evidence

McDonald's filed three affidavits from representatives of McDonald's companies in Germany, France and the UK:

• Claiming significant sales figures in relation to 'Big Mac' sandwiches for the relevant period; and
• Exhibiting:
  • Brochures and print-outs of advertising posters in all three languages from McDonald's;
  • Packaging for sandwiches boxes from McDonald's;
  • Blank menus, for which the price is yet to be filled, featuring the mark;
  • Printouts from McDonald's websites from several European country domains, depicting 'Big Mac' sandwiches; and
  • A print-out of the Wikipedia page on the 'Big Mac' hamburger.

Ruling

The EUIPO quite decisively held that the evidence submitted was insufficient to establish genuine use of the trade mark for the following reasons:

• Affidavits from trade mark owners or their employees do have some probative value but are given less weight than independent evidence. The value of this evidence must be supported by other items of evidence;
• While some of the evidence provided referred to the relevant time period and to some member states it did not prove the extent of use of the mark. For example:
  • The mere presence of a trade mark on the proprietor's own website was not sufficient to prove genuine use, unless the website also showed the place, time and extent of use.
  • The evidence did not provide any information as to how many times the website had been visited, from where the visits originated or any sales/orders made through the website during the relevant period.
  • While the brochures and packaging showed the mark, no evidence was provided to show how they were circulated, who they were offered to and if they resulted in any purchases.
• Statements in witness statements that significant sales have been made in the EU are not sufficient without being supported by evidence of actual sales. No such evidence was submitted.
• No evidence was submitted as to how the mark had been used in relation to class 42 restaurant services.
• The Wikipedia entry for 'Big Mac' was not considered to be a reliable source as anyone can amend a Wikipedia entry.

The EUIPO was critical of the evidence submitted by McDonald's stating that:

The methods and means of proving genuine use are unlimited. The finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that the EUTM proprietor chose to restrict the evidence submitted.

Consequently, the EUIPO revoked the BIG MAC mark for non-use from 11 April 2017. According to press reports, McDonald's have stated that it will appeal this decision and it will be interesting to see how it overcomes the assessment of its poor quality evidence.

Key points

It is important for brand owners when defending a revocation action for non-use to ensure that they file quality evidence of use which ideally includes:

1. evidence from both within their organisation and independent sources.
2. sales information.
3. evidence of consumer interaction with the mark such, as website traffic information and on social media; and
4. details of how widely any advertising/marketing materials have been distributed and through what channels.

This case also is a warning to brand owners filing trade marks with specifications that are overly broad and include goods or services which are not likely to be used under the mark. The upcoming Sky v Sky Kick reference to the CJEU will also be of interest to brand owners in relation to the issue of overly-broad specifications.