When a BIG MAC isn’t a Chicken Sandwich: a cautionary tale for trade mark owners

Fast-food restaurant giant, McDonald’s, has been the registered owner of the iconic trade mark ‘BIG MAC’ in the European Union since 1996. For those unfamiliar with McDonald’s dining, a Big Mac comprises “Two 100% beef patties, a slice of cheese, lettuce, onion and pickles. And the sauce.”[1]

Background

In the long standing trade mark tussle between the Irish fast-food chain, Supermac’s, and McDonald’s, McDonald’s had filed oppositions against Supermac’s EU applications for ‘SUPERMAC’S’. In 2017, Supermac’s retaliated by filing revocation proceedings against McDonald’s EU registration for ‘BIG MAC’. Supermac’s claimed that the mark had not been put to genuine use for a continuous period of five years for all the goods and services for which it was registered, which broadly included prepared food and a variety of sandwiches in Classes 29 and 30, as well as services relating to operating or franchising restaurants in the then Class 42. The five-year period spanned from 11 April 2012 to 10 April 2017. At first instance, the EUIPO’s Cancellation Division revoked ‘BIG MAC’ in its entirety, finding the evidence submitted by McDonald’s to be insufficient to defend the registration.

Upon appeal and consideration of further evidence submitted by McDonald’s, the Board of Appeal partially annulled the Cancellation Division’s earlier decision. It found that the scope of the ‘BIG MAC’ specification should instead be narrowed to a range of goods and services for which use had been evidenced, namely “foods prepared from meat and poultry products, meat sandwiches, chicken sandwiches” in Class 29, “edible sandwiches, meat sandwiches and chicken sandwiches” in Class 30; and “services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods” in Class 42.

‘BIG MAC’ all round at the General Court

The tussle continued with Supermac’s going up to the EU General Court and challenging the Board of Appeal’s decision, seeking to revoke the ‘BIG MAC’ trade mark in the EU for all terms except “meat sandwiches” in Class 30. The General Court held that McDonald’s had failed to provide sufficient evidence of use of its ‘BIG MAC’ mark beyond “meat sandwiches”, “edible sandwiches” and “foods prepared from meat products”, and in part overturned the Fourth Board of Appeal’s decision, further revoking the ‘BIG MAC’ mark for the terms “chicken sandwiches” and “foods prepared from poultry products” in Classes 29 and 30 as well as all the Class 42 services which had been maintained by the Board of Appeal. The General Court considered McDonald’s evidence, which included, inter alia, posters and menus of the ‘Grand Big Mac’ Chicken Sandwiches in France, screenshots of TV adverts, sales figures and other analytics. However, this evidence was not found sufficient to prove that the ‘BIG MAC’ mark was used for poultry products including “chicken sandwiches” in Classes 29 and 30 since it did not show the extent of use, including in particular the volume of sales, length of the period during which the mark was used and frequency of use. The General Court further held that all the evidence related to use for goods only which cannot serve to prove use for specific services.

So as it stands, McDonald’s has a much reduced specification in the EU for its ‘BIG MAC’ mark, but can appeal the decision up at the Court of Justice of the European Union. It remains to be seen if it will do so, but the helpful definition of a ‘BIG MAC’ on its own website is unlikely to be of much assistance to McDonald’s if it does choose to appeal further.

Comment

Even well-known trade marks like ‘BIG MAC’ are vulnerable to revocation proceedings and if the brand owner cannot provide sufficient evidence of genuine use of the mark in a five-year period in the EU (or similarly in the UK), they risk losing at least part of their specification. Trade mark owners should ensure that a mark is used for all terms for which it is registered if they want to maintain the benefit of the full scope of protection. If they do not, or they fail to keep adequate records on the use of a mark, they run the risk of losing all or, like McDonald’s, a part of their registered protection in the event they have to defend their rights in a non-use revocation actions.

[1] https://www.mcdonalds.com/gb/en-gb/product/big-mac.html

Should you have any queries in relation to trade marks, or indeed any other intellectual property law matters, please contact Claire Lehr or any other member of our Intellectual Property Team.

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