There have been many posts and publications about the recent Cancellation Division’s decision in the BIG MAC case – but the question we are all wondering is – can you still call a Big Mac a Big Mac?
As many will know, Supermac sought to cancel McDonald’s EU Trade Mark No. 62638 BIG MAC. The mark has been registered since 22 December 1998 and covers classes 29, 30 and 42. Supermac requested that the EUTM be revoked in its entirety on the basis of non-use.
As its evidence of genuine use, McDonald’s submitted three affidavits (signed by representatives of McDonald’s), a Wikipedia extract, printouts from the website of its restaurants from around the EU and brochures and printouts of advertising posters .
The EUIPO was clear that affidavit evidence is given less weight than independent evidence – perceptions of a party involved in a dispute may be affected by personal interests. The Wikipedia article was criticised because Wikipedia is not considered a reliable source of information.
On the printouts of McDonald’s own websites, it was held that these did not show the volume of internet traffic to the websites or where consumers were most likely to look at the websites. In addition, whilst the websites did exhibit the key goods (sandwiches), there were no prices included, and it could not be concluded whether, or how, a purchase could be made, or how an order could be placed.
On the packaging materials and brochures, it was held they did not contain any information about how the brochures were circulated, who they were offered to, and whether they lead to any potential or actual purchases. Also, there was no independent evidence to show how many of the products for which the packaging was used were actually sold. All of the brochures, it seemed, related to packaging and printed material that originated from McDonald’s own internal marketing divisions.
Overall, the evidence submitted could not allow the EUIPO to conclude definitively that there had been actual sales and that the mark had been genuinely used without resorting to possibilities and presumptions. The mark was ordered to be cancelled.
It appears that McDonald’s representatives simply were not in possession of evidence that would normally be submitted to demonstrate actual sales, such as invoices or statistics about website hits. This raises the question as to what the representatives could have submitted as evidence which was on the public record. For example, online publications, evidence of the products being sold via other channels, e.g. Uber Eats, McDonald’s annual reports, and statistics from independent statistics companies. It may even have helped if someone went into a physical McDonald’s store and took a photo of the product being offered for sale to the public.
Even if McDonald’s had submitted sufficient evidence, it likely would have only been sufficient to support the registration for some goods and services, e.g. meat sandwiches. McDonald’s most likely would not have been able to show genuine use of the mark BIG MAC on products such as “chocolate” or services such as “planning and construction consulting for restaurants for others”.
This is a stark reminder to brand owners of the importance of keeping good records of the use of a mark, as well as being able to produce that evidence in a limited timeframe if required. In this case, whilst not making a practical difference, noting that McDonald’s has other registrations for BIG MAC (e.g. EUTM No. 017305079), the publicity generated around this case likely was not welcome. But most importantly, regardless of the result of this case, McDonald’s will still be able to use and sell its BIG MAC product – much to many people’s relief, given that 200 million Big Mac’s were apparently sold in 2016.