McDonald’s EU trade mark for BIG MAC was revoked on 15 January 2019 on grounds of non-use, in response to an application filed by Irish company Supermac.
Supermac argued that McDonald’s trade mark had not been put to genuine use in the EU during a continuous period of five years and could not, therefore, be used to stop Supermac building on its brand in Europe.
McDonald’s purported to provide evidence to the contrary of its use of the EU trade mark, including sales figures, printed advertising materials and also an entry from Wikipedia. The EU Intellectual Property Office (EUIPO) noted that anybody can amend a Wikipedia entry and as such, this should have been provided along with “concrete evidence” supporting McDonald’s claims. In short, the EUIPO was not satisfied that McDonald’s had evidenced the genuine use during the relevant period of the EU trade mark, BIG MAC, in relation to any of the goods or services for which the mark was registered (even ”sandwiches”) and therefore revoked it.
This case highlights how trade mark owners cannot afford to be complacent about managing their trade marks - even in relation to the most well-known brands in the world! It is a good reminder for all trade mark owners to actively monitor on an ongoing basis the extent to which a mark is used in relation to all relevant goods and/or services and to regularly compile and review compelling evidence of genuine use, in case it is ever called into question. This evidence should at least:
- establish the place, time, extent and nature of use of the trade mark for the particular goods and/or services; and
- include evidence of actual sales (e.g. receipts/invoices) and evidence from independent sources (such as adverts published in dated third party materials) with confirmation as to the extent of their distribution.
Clarion’s trade mark portfolio management services include prompting clients to check at prescribed times in rolling five-year periods whether they have compiled evidence of genuine use to defend non-use attacks and whether we can assist in this regard. If you have any queries regarding this article or any questions about trade marks generally, please take a look at the Intellectual Property Team page for more details or to get in touch with the team directly.
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