McDonald’s loses “Big Mac” trademark
Up until now, the only place to go when craving a Big Mac, has been the nearest McDonald’s. But this may change with a recent ruling from the EU trademark office (EUIPO), stating that McDonald’s no longer has the right to their “Big Mac” trademark in the European Union.
Big Mac challenged by Supermac
Questioning McDonald’s and one of their most beloved trademarks, could at first glance seem like an uphill battle. However, the Irish fast food chain, Supermac, did just that by requesting the revocation of the trademark “Big Mac” - claiming that “Big Mac” hasn’t been put to genuine use for a period of 5 years.
In these types of cases, the burden of proof regarding the genuine use of the trademark lies with the trademark owner - and not the applicant. Therefore, Supermac could merely sit back and watch, while it was up to McDonald’s to provide the necessary documentation proving their genuine use to avoid a revocation of the “Big Mac” trademark.
The legal background
According to the trademark rules, a trademark can be revoked due to lack of genuine use for a continuous period of 5 years. This makes sure that companies only have registrations that they actually use, and not just a stockpile of unused trademarks. If the owner of a trademark is unable to document the use, the trademark may be revoked in full or partially.
Wikipedia, brochures and packaging weren’t enough
The primary question in the case was whether McDonald’s was capable of documenting a genuine use of the trademark “Big Mac” in the EU or not. To prove their use, McDonald’s submitted evidence like affidavits detailing sales figures, brochures, printouts of advertising posters, printouts from McDonald’s websites and an article from Wikipedia about Big Mac burgers.
The evidence provided by McDonald’s was, however, found to be insufficient to prove genuine use during the relevant period of 5 years. The affidavits provided by McDonald’s had little value due to their partial nature, and the Wikipedia article was not useful either, seeing as everybody can edit a Wikipedia page. The brochures and advertisement material were rejected as well, as it did not document that the material had actually been used – nor to what extent.
Due to the lack of documentation from McDonald’s, EUIPO revoked the “Big Mac” trademark.
The difference between use and documented use
The main reason McDonald’s lost their “Big Mac” trademark was the lack of documentation proving a genuine use for a continuous period of 5 years. Even though it might seem obvious that there has in fact been a genuine use, there is a difference between a genuine use, and a genuine use which you can prove. And even though McDonald’s sell Big Mac burgers on a daily basis, it’s not enough if they can’t actually prove it with the right kind of documentation.
McDonald’s will most likely appeal the case to the Board of Appeals – and in the appeal, they are likely to take the requirements for proving use much more serious, having seen that EUIPO will not hesitate to revoke their trademark rights. It shouldn’t be too big a problem for McDonald’s – because it’s obvious the mark is still in use, they just need to dig out the right material to prove it.
But EUIPO’s decision is a kind reminder to all trademark owners not to overlook the importance of the evidence that needs to be provided to prove genuine use. And it’s a finger-wagging from EUIPO, stating that no matter how big your brand is, you still need to provide sufficient material to uphold your registration. So, for trademark owners, it’s a very good idea to remember to continuously save copies of marketing material, as it may come in handy at a later point.
And as for the “Big Mac” name, I wouldn’t put all my money into starting your own line of Big Mac burgers, because even though McDonald’s lost their EU trademark, they still have a number of national trademarks (in Denmark, for example), which they will surely invoke if you start using their name.
If you have any questions regarding the case or the evidence that needs to be provided to prove genuine use, feel free to contact us.