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article 17 Jan 2019

No more Big Mac in the EU?

The European trademark authority (EUIPO) has revoked the BIG MAC trademark of McDonald's. Apparently the trademark of the famous burger has not been used in a normal manner for over five years. The story has been a hot topic in the media, but the question remains: what really happened?

Holders of registered trademarks have a duty to use them. This means using a trademark for the goods and/or services for which it has been registered. A third party that believes a trademark has not been used for a consecutive period of five years can apply for it to be revoked.

The ‘Big Mac’ name has been registered as an EU trademark for McDonald’s since 1998. Irish fast-food chain Supermac’s, which has sold hamburgers since 1978, has been at loggerheads with McDonald’s about its name for quite some time. This ultimately led to a request by Supermac’s in April 2017 for the EUIPO to revoke the Big Mac trademark on the grounds of McDonald’s’ failure to use it. It was then up to McDonald’s to prove that it had indeed used the trademark in the five years immediately preceding the application. You might think this wouldn’t prove too difficult, given there’s a McDonald’s selling Big Macs on just about every street corner. However, McDonald’s seems to have responded somewhat light-heartedly.

The evidence

The evidence it presented in the case comprised:

  • Statements from various representatives claiming high sales figures;
  • Brochures and copies of promotional posters advertising Big Macs;
  • Big Mac packaging;
  • Screenshots from various McDonald’s websites showing the Big Mac;
  • A print-out from Wikipedia containing information about the hamburger.

Not enough

The EUIPO was rather critical of the evidence that was produced. Firstly it pointed out that every piece of evidence submitted came from McDonald’s itself. It also stated that being featured on a website is not enough to demonstrate genuine use of a trademark. McDonald’s failed, for example, to provide details of the numbers of visitors to its website. It was also unclear whether the Big Mac could be ordered online and, if so, how many were actually ordered.

With regard to the brochures and promotional posters the EUIPO stated that it was not clear how these were distributed and to whom, or whether they had resulted in any actual or potential sales. Lastly it noted that it did not regard Wikipedia as a reliable source of information.

In summary, the EUIPO concluded that the evidence submitted was not sufficient to demonstrate genuine use, referring specifically to the lack of documents and data on how products were offered and sold under the ‘Big Mac’ label. As a result, it decided to revoke the trademark protection with effect from 11 April 2017, the date of Supermac’s application.

Pending appeal

McDonald’s has since announced that it will appeal this decision. New evidence will be allowed to be submitted in the appeal. In addition, the trademark will not be formally revoked while the appeal is pending. At this stage, therefore, media reports that McDonald’s has lost its sole rights to the ‘Big Mac’ name are somewhat premature. However, McDonald’s will presumably be hoping it won’t end up having its hamburgers snatched from under its nose.