MCDONALD’S RISKS TO LOSE THE EXCLUSIVE RIGHT ON THE BRAND “BIG MAC”
In its decision of 16 January 2019, EUIPO declared the revocation of the trade mark “BIG MAC”, owned by McDonald’s. Therefore, McDonald’s risks not to use the contested trademark exclusively within the European Union.
The recent EUIPO decision marks an important achievement in the fight started by the Irish fast food chain Supermac, which filed an application under Article 58(1)(a) of the EU Trade Mark Regulation, seeking the revocation – in its entirety – of McDonald’s trademark “BIG MAC”, which would not actually be used for a continuous period of five years.
As this is an application for revocation for non-use, the burden of proof to prove the actual use of the trade mark for all the goods and services for which registration has been obtained rests with the trade mark owner and not with the applicant. In the present case, the mark “BIG MAC” was registered for classes 29, 30 and 42 of the Nice Classification and therefore McDonald’s provided evidence of use to the Cancellation Division of the European Office. In particular, the following evidence was produced: three affidavits signed by representatives of McDonald’s illustrating in detail the sales figures for the period 2011-2016; brochures and prints of advertising posters, dated between 2011 and 2016; Prints of some McDonald’s websites, dated between 7/1/2014 and 3/10/2016; a print from a Wikipedia entry providing information on McDonald’s Big Mac. In addition, McDonald’s did not provide evidence from third parties and no indication was given as to how the brochures were disseminated nor were any data provided from which it could be inferred that those brochures had led to actual purchases by the consumer public. The Cancellation Division also found the voice of Wikipedia to be of little relevance, noting that anyone can modify the voice of Wikipedia.
The Cancellation Division therefore considered that those tests – after a global assessment of them – were neither sufficient nor appropriate to demonstrate actual and genuine use during the period of time in question (11/4/2012 – 10/4/2017). Therefore, EUIPO declared the mark “BIG MAC” null and void for non-use. However, McDonald’s may appeal such a decision within two months of the date on which it was issued.