The importance of submitting proof of use : revocation of the McDonald's trademark BIG MAC
Cancellation Division, EUIPO, Decision n°14788C of 11 January 2019,
Supermac's v McDonald's
A request for revocation for lack of genuine use was filed against the EU trademark BIG MAC n°62638, registered since 22 December 1988, and covering products in classes 29 and 30 (including sandwiches, and foodstuffs constituting ingredients for sandwiches) and services in class 42 linked to the restaurant trade.
When it comes to revocation for lack of genuine use, the burden of proof weighs upon the trademark owner rather than upon the applicant.
McDonald’s therefore supplied the following proof so as to demonstrate genuine use of its BIG MAC trademark: 3 affidavits signed by representatives of the franchise in Germany, France and the UK, including notably declarations regarding turnover from sales of Big Mac sandwiches, brochures and promotional posters in German, French and English, product packaging, extracts from McDonald’s websites in 18 EU countries and extracts from the Wikipedia page dedicated to the Big Mac hamburger.
The EUIPO cancellation division held that these elements were not sufficient to demonstrate genuine use of the trademark under attack during the given period, for the following reasons :
- The affidavits, even if they are recognised as sufficient proof, must be considered as having weaker probative value than autonomous and independent evidence in light of the fact that the persons making the declarations have a vested interest to defend such that those declarations must be supported by independent proof. Consequently, the declarations concerning turnover linked to Big Mac sandwiches in France, Germany and the UK cannot be taken into consideration as they are.
- The proof linked to the presence of the trademark on the McDonald’s websites, brochures and promotional posters may demonstrate the nature of the trademark’s use as well as the fact that the products and serves were offered for sale to the public; however, this material must be supported by other elements. On that note, McDonald’s has not furnished any proof as to the number of visitors to its websites, their countries of origin, dates, or whether purchases were in fact made, even though that type of information ordinarily is known to an enterprise.
- As for product packaging, McDonald’s has not provided any information as to the number of products for which it was used, while as concerns the publicity pamphlets McDonald’s did not indicate their method of distribution.
- The elements of proofs furnished by McDonald’s only demonstrate that the sign was presented in relation to certain designated goods and services. However, these elements to not provide any information as to the trademark’s real commercial presence within the EU territory. The elements notably do not indicate in any conclusive manner that the products are offered for sale because there exists no confirmation of any commercial transaction neither online nor in any physical point of sale.
This decision is, first and foremost, surprising considering the BIG MAC trademark’s apparent celebrity as a burger brand.
All the same, it is important to recall that even if one is the owner of a trademark extremely well-known in the EU, there exists no exception in terms of proof of use: the trademark owner must abide by the forms of proof stipulated in the Regulation.
Points to remember from this decision :
- At the filing stage, it is advisable to word the product identification precisely so as to calibrate the registration as closely as possible to the goods and/or services for which the trademark ultimately will be used.
- Once the trademark is registered, it is advisable to compile regularly any elements capable of proving genuine use, that is to say proving that the goods and/or services have been placed on the market for sales purposes (EUIPO does not concern itself with a trademark’s commercial success) in order to be able to counter any potential revocation action.In that respect, are admissible as proof product packaging and labels, price lists, catalogues, invoices, photographs, and newspaper advertisements (see Trademark Delegated Regulation Art 10(4)).
As a result, it is not sufficient merely to demonstrate that a trademark is highly visible to consumers in order to prove genuine use in a commercial sense.
It remains open to McDonald’s to appeal the decision to the Boards of Appeal, which may re-examine the matter in light of any new proof.