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A Useful Reminder From The EUIPO: You Can’t Have Your “Burger” And Eat It

A Useful Reminder From The EUIPO: You Can’t Have Your “Burger” And Eat It

Last year, McDonald’s iconic Big Mac burger celebrated its 50th anniversary.  Since its launch in 1968, the Big Mac’s continued popularity has cemented its status as the one of the most renowned burger marks in the world, with sales in more than 100 countries and an estimated 28 Big Macs sold globally every second.  However, despite its undoubted success with consumers, it hasn’t all been plain sailing for McDonald’s, who recently received a grilling from the Cancellation Division of the EU Intellectual Property Office (“EUIPO”) in a decision which revoked the company’s EU trade mark for “BIG MAC” (trade mark number 62638) (the “Big Mac Mark”) and highlighted the importance of brand owners being able to demonstrate genuine use of their trade marks. 

In 1998, the Big Mac Mark was registered in three classes of good and services, including meat sandwiches and restaurant services.  The drive-thru to revocation began on 11 April 2017, when Supermac’s (Holdings) Ltd (“Supermac’s”) filed an application for revocation of the Big Mac Mark under Article 58(1) of the EU Trade Mark Regulation, on the grounds that the mark has not been put to genuine use during a continuous period of five years following the date of registration. 

Founded by Pat McDonagh in 1978, Supermac’s is an Irish fast food chain with over 100 outlets across the country.  The long-running burger battle dates back to 2014, when McDonald’s halted Supermac’s planned expansion into the UK and Europe by filing an opposition against the registration of its EU trade mark for “Supermac’s” on the basis that this would lead to confusion between the two brands.  

In response to Supermac’s application for revocation, McDonald’s filed evidence of use, including three affidavits signed by representatives of McDonald’s in the UK, Germany and France; brochures and printouts of advertising posters; print outs from numerous McDonald’s websites; and a Wikipedia entry relating to the Big Mac. 

In a ruling which has surprised IP specialists and burger fans alike, the EUIPO concluded that the evidence submitted by McDonald’s was insufficient to establish genuine use of the Big Mac Mark in the relevant territory during the relevant period.  As a result, the EUIPO revoked the Big Mac Mark in its entirety. 

The decision of the Cancellation Division reaffirms when genuine use of a trade mark will exist, namely, where the mark is used in accordance with its essential function – which is to guarantee the identity of the origin of the goods or services for which it is registered.  Whilst McDonald’s has already shown appetite for a second helping at the EUIPO by confirming that it intends to appeal, the ruling contains a number of useful reminders for trade mark proprietors:

  • Use it or lose it – once a UK or EU trade mark has been registered for five years, a third party can file a request for revocation of the mark on the grounds of non-use in relation to any of the goods and services for which it is registered.  To minimise exposure to an application of this kind, trade mark owners should ensure that once registered, actual use is made of their marks and in particular, that five years of non-use does not pass.
  • Extent of use – general use of a trade mark will not be sufficient to refute an application for revocation of the mark on grounds of non-use.  Proprietors must ensure that the trade mark is put to genuine use in all of the classes of goods and services which the mark covers.  By way of example, if a trade mark is only used in one of the three classes for which it is registered, it will be at risk of revocation in respect of the two unused classes.  With this in mind, trade mark owners should be wary of registering marks in overly-broad class specifications which go beyond the actual or intended use of the mark, as this is likely to make proving genuine use difficult. 
  • Sufficiency of evidence – it is not enough for trade mark owners to simply assert that their marks have been used; they must be able to provide evidence which demonstrates genuine use.  However, the revocation of the Big Mac Mark serves up an important reminder that not all evidence will pass the EUIPO’s taste test, with the decision confirming that any evidence must provide sufficient indication of time, place, extent and nature of use of the trade mark.  Trade mark owners should therefore ensure that they maintain comprehensive, evidence-based records of trade mark use from a variety of sources, including third parties.

The revocation of the Big Mac Mark is a stark reminder of the importance of brand owners being able to demonstrate genuine use of their trade marks, regardless of their size – yes a Big Mac is big, but not quite big enough to rely on insufficient evidence!  However, the above reminders highlight that there are a number of measures which trade mark owners can adopt to avoid a similar fate. 

We regularly advise businesses on the steps which can be taken to protect and enforce their trade marks and other intellectual property rights.  If this is something which you think your business could benefit from, please do not hesitate to get in touch. 

Rebecca Ablett

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