McDonald’s loses its BIG MAC trade mark in Europe … for now
17 Jan '19

A recent trade mark case involving McDonald’s and its famous BIG MAC trade mark has captured global attention. It involves a sensational headline of a global corporation losing rights in the EU to arguably its most iconic brand. However, the EU IPO’s decision makes good sense. This is actually a case about how poor management of a trade mark can jeopardise the registration of a key IP asset.

The facts

SUPERMAC’s (an Irish burger / fast food chain) is involved in several trade mark skirmishes in the EU against McDonald’s. This particular case is about Supermac’s application for the cancellation of McDonald’s ‘BIG MAC’ trade mark in the EU on grounds that McDonald’s had failed to use its trade mark.

The BIG MAC trade mark is registered in many jurisdictions in respect of burgers but also, services relating to restaurants and franchising.  Supermac’s obviously doubted whether McDonald’s had been using BIG MAC as a trade mark for its actual restaurants and therefore applied for the cancellation of this trade mark. Presumably, the strategy was to smooth the way for the registration of the Supermac’s brand in the EU. A common strategy where a party’s attempts to register its trade mark are foiled by another existing identical or similar trade mark.

McDonald’s poor evidence of use

McDonald’s, as the owner of the challenged trade mark, had the burden of proving its use of the BIG MAC trade mark in the EU. McDonald’s failed spectacularly.

McDonald’s presented scant evidence of the use of BIG MAC in the EU. Its evidence was confined to:

  1. Three affidavits signed by representatives of McDonald’s companies in Germany, France and the UK claiming significant sales figures in relation Big Mac burgers.
  2. Copies of brochures and advertising posters, again in German, French and English, showing pictures of Big Mac burgers.
  3. Printouts from McDonald’s numerous European websites each depicting a variety of burgers including the Big Mac.
  4. A printout from wikipedia.org with information on the Big Mac hamburger.

What the EU IPO said

The Cancellation Division of the EU IPO noted the very limited probative value of the above evidence, observing:

  1. The employee affidavits were not independent statements and were not supported by other evidence.
  2. The mere presence of the Big Mac trade mark on a website will not, of itself, be sufficient to prove genuine use. Evidence was required to show details of the place, time and extent of use of the website. Traffic data would have helped McDonald’s cause.
  3. No evidence was provided showing a connection between McDonald’s European websites and any sales of BIG MAC products.
  4. No information was provided linking the BIG MAC brochures to any sales.
  5. McDonald’s evidence did not give any data for the real commercial presence of the Big Mac brand for any of the registered goods or services.
  6. Wikipedia entries are not considered a reliable source of information as they can be amended by users. Any information must be supported by other pieces of independent evidence.

The EU IPO therefore concluded that the evidence as a whole did not provide conclusive information the burgers marked with the Big Mac brand were offered for actual sale. There was no confirmation of any commercial transactions whether online or at physical stores.

Finally, McDonald’s failed to produce any evidence of how Big Mac was used in respect of its claimed restaurant services. Accordingly, and unsurprisingly, McDonald’s has suffered an embarrassing defeat losing its Big Mac trade mark in the EU.

Lessons for all trade mark owners in the EU, Australia and other jurisdictions

  1. Ensure you properly describe your specification of goods and services when applying for the registration of your trade mark. This is an important legal task not to be left to chance.
  2. Ensure you genuinely use the trade mark in respect of all claimed goods and services covered by your registration.
  3. Ensure you collect and maintain evidence of the actual use of your registered trade mark so that you can defeat any non-use challenge.

Will the Big Mac exit the EU?

We expect McDonald’s to appeal. They have 2 months to do so and we’ll follow this case with interest. Clear signposts have been provided by the EU IPO as to required evidence. With proper evidence, McDonald’s should succeed in the reinstatement of the trade mark for burgers but, from afar, it is difficult to see BIG MAC being retained for restaurant and franchising services. Supermac’s looks safe for now.