McDonald’s loses Big Mac exclusivity in EU over trademark dispute

Image credit: Katrine Skrebele Pixel

On June 5, 2024, in the proceedings brought by Supermac against the European Union Intellectual Property Office (EUIPO) and McDonald’s, the General Court ruled that McDonald’s had in fact failed to prove real Use of its “Big Mac” European Union trademark (EUTM) in the categories of “chicken sandwiches”, “food prepared from poultry products” and services, namely “the provision of services of or connected with the operation of restaurants and other establishments or facilities engaged in the provision of food and drinks for consumption and in drive-through facilities; preparation of take-away food”.

The General Court therefore partially annulled and varied the EUIPO decision and, as a result, revoked the registration of the EU trademark for the goods and services for “Big Mac” other than “Meat Sandwich”.

While McDonald’s can still use the “Big Mac” trademark in the EU, the ruling means McDonald’s no longer has the exclusive right to use the “Big Mac” trademark on chicken sandwiches, foods made with poultry products and food services for which protection has been revoked.

background

For EU trademarks, once non-use is claimed, the burden of proof shifts to the trademark owner. real The mark has been used continuously in that territory for at least five years in relation to the relevant goods and services. real It needs to be used in at least one EU member state.

Litigation between Super Mac and McDonald’s dates back to 2015, when McDonald’s opposed Super Mac’s “Mc” EU trademark. In 2017, Super Mac filed an action to cancel its “Big Mac” EU trademark on the grounds of non-use. The action was upheld in January 2019, followed by McDonald’s’ successful appeal in March 2019, and Super Mac appealed to the General Court.

Evidence and real use

In assessing whether the use of a trademark realall facts and circumstances relevant to determining whether use of the mark in business in the course of trade is genuine must be considered.

The General Court considered EU regulations which provide that the use of evidence must prove:

• The place, time, extent and nature of the use of the mark;
• The types of evidence should be limited to packaging, labels, price lists, catalogues, invoices, photographs, newspaper advertisements and written statements clearly showing the trademark.

The evidence McDonald’s submitted to the EUIPO’s Revocation Division included a printout of a French advertising poster, a screenshot of a TV ad that aired in France in 2016, and a screenshot of McDonald’s France’s Facebook account in 2016 (shown below):

Image: Supplied

Image: Supplied

Image: Supplied

The General Court held that the evidence did not show any regularity and repetition in the distribution of the Big Mac goods and was therefore insufficient to prove the real commercial use of the Big Mac in the “chicken sandwich”. Furthermore, the evidence did not include the sales prices of these goods.

Paragraph 24 of the General Court’s judgment states:

The actual use of a trademark cannot be proved by probability or presumption, but must be proved by solid objective evidence that the trademark is actually and fully used in the relevant market.

Implications for brand owners

The judgment is a reminder that even well-known brands can face cancellation or partial cancellation proceedings.

When defending against the revocation or cancellation of a trademark, the evidence provided should clearly demonstrate the use of the trademark and the mark in commerce in relation to the relevant goods and/or services and during the relevant period. Token use or one-off use may not be sufficient.

Brand owners should retain evidence of use and keep comprehensive records. Brand portfolios should be reviewed regularly and protection obtained for all forms of the mark, for all related goods and/or services and in all relevant territories.