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Chloe Fernandez
Chloe Fernandez,
PARALEGAL
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McDonald's Big Mac trade mark cancellation highlights importance of filing sufficient evidence of use
22 January 2019

Following an application by Irish fast-food chain, Supermac’s, the EU Intellectual Property Office (EUIPO) has revoked McDonald’s ‘BIG MAC’ trade mark registration (a work mark using capital letters) on grounds of non-use. 

The decision follows a long-running trade mark dispute which began when the EUIPO ruled in 2016 that whilst Supermac’s could trade in the EU using its name it was not entitled to register a trade mark “Supermac” in respect of  fast-food/takeaway menu items or services in the EU, following opposition by McDonald’s, so a partial victory for McDonald’s. Frustrated at this threat to its expansion in the EU, Supermac’s sought to cancel McDonald’s ‘Big Mac’ and ‘Mc’ trade marks for certain classes of use.

As part of the dispute, Supermac’s had filed an application to revoke McDonald’s ‘BIG MAC’ EU Trade Mark Registration, on grounds that it had not been put to genuine use during the relevant five year period. McDonald’s filed evidence consisting of affidavits of employees in the UK, France, and Germany, brochures, and printouts of advertising posters, printouts from its websites and an extract from Wikipedia. Ultimately, however, the evidence was found to be insufficient to establish genuine use of the trade mark.

Amongst other things, the EUIPO commented that written statements drawn up by an interested party or its employees are given less weight than independent evidence; that the presence of a trade mark on websites is insufficient to prove genuine use, unless the place, time and extent of use is also shown; and that Wikipedia is not a reliable source of information.

Had McDonald’s provided evidence as to how often its websites had been visited, e.g. records relating to internet traffic, and submitted proof that the products marked with the trade mark were offered for sale with confirmation of commercial transactions, the outcome might have been different. 

This decision serves to demonstrate that even a well-known brand can be at risk and the importance of spending time and care in submitting sufficient evidence cannot be underestimated. 

McDonald’s have just announced that they will appeal the decision. In any event, McDonald’s still owns rights in the Big Mac mark. Indeed, it filed a new application for the ‘Big Mac’ trade mark after the cancellation action was submitted.

Consistent with our policy when giving comment and advice on a non-specific basis, we cannot assume legal responsibility for the accuracy of any particular statement. In the case of specific problems we recommend that professional advice be sought.

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