Trade Marks

McDonald's loses European Union (EU) trade mark registration for BIG MAC

January 17, 2019

McDonald's International Property Company, Ltd has failed to successfully defend an action to revoke (cancel) one of its EU trade mark (EUTM) registrations for the mark BIG MAC.

An Irish company, Supermac’s (Holdings) Limited filed a revocation application against the trade mark registration on the basis of non-use of the BIG MAC mark. As the BIG MAC mark had been registered for more than five years, it was vulnerable to cancellation (either partially or in its entirety) if genuine use of the mark could not be shown with evidence.

Supermac’s (Holdings) Limited had filed the revocation application following a dispute with McDonald's in connection with the SUPERMAC’S name.

McDonald's filed evidence of use of the BIG MAC mark in the EU in an attempt to defend the revocation application; however, upon review of the evidence, the EU Intellectual Property Office held that it did not show genuine use of the BIG MAC mark in the EU.

The EU Intellectual Property Office commented on its decision that “the finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that the EUTM proprietor chose to restrict the evidence submitted”.

The EU Intellectual Property Office was critical of the evidence, in part because no third party independent evidence was filed, which would have carried more weight than the internal evidence that was filed by McDonald's. This case provides an important reminder to file sufficient evidence which clearly shows use of a mark in commerce when called upon to prove that the mark has been put to genuine use.

While it is interesting to see that a company the size of McDonald's has been unable to successfully defend a non-use cancellation action, the decision may be appealed. We further note that McDonald's has a further EU trade mark registration for the BIG MAC mark, which was filed more recently than the registration which was attacked on the basis of non-use. As the later-filed trade mark is not yet five years old, McDonald's will not, at this time, need to show genuine use of the BIG MAC mark in order to enforce its later-filed trade mark registration against third parties

An EU trade mark registration is a single registration which gives the owner protection for the registered trade mark throughout the EU. EU trade marks can offer a cost-efficient means for a trade mark proprietor to gain protection in the EU.

If you have any questions about EU trade marks please get in touch with your usual contact at Swindell & Pearson, or the author Katy Fuggle ([email protected]).