(by Gaia Gusmini and Rocco Lanzavecchia)

With decision no. 14 788 C of 11 January, the Cancellation Division of the European Union Intellectual Property Office (EUIPO) ruled on the dispute started by Supermac’s Holding Ltd. (herein, “Supermac’s”) against McDonald’s International Property Company Ltd. (herein, “McDonald’s”) for the revocation of the European trademark BIG MAC (word mark n. 62638, registered on 22/12/1998 for classes 29, 30 and 42 of the Nice Classification).

The dispute started in March 2014, when the Irish fast food chain Supermac’s filed an application for registration of the word mark “Supermac’s” for goods and services of classes 29, 30 and 42 and McDonald’s objected, claiming that it was mistakable with some of its own trademarks.

The decision at issue concerns the request filed by Supermac’s in April 2017 for the revocation of the trademark “Big Mac”, famous all over the word and symbol of the American giant McDonald’s, based on the non-genuine use of the trademark by the EUTM proprietor during a continuous period of five years in relation to all the goods and services for which the request for registration was filed, according to Article 58 paragraph 1 letter a) of EU Regulation 2017/1001 on EU trademark (EUTMR).

McDonald’s provided, as evidence of use of the trademark, three affidavits signed by representatives of McDonald’s Germany, France and the United Kingdom – which are three of the economically most important Member States and so, in McDonald’s opinion, are sufficient to prove that the mark is used in the European Union – claiming significant sales figures in relation to sales of  “Big Mac” sandwiches for the period 2011-2016, and brochures and printouts of advertising posters in German, French and English used between 2011 and 2016 showing, among other products, “Big Mac” sandwiches. In addition, McDonald’s submitted typical packaging in which the products are served to the public and printouts from many websites that the same company uses in each European State depicting “Big Mac” sandwiches, as well as a printout of the information taken from the well-known website en.wikipedia.org on the “Big Mac” hamburger, its history and nutritional values in different States.

Supermac’s argued that that evidences of use were insufficient to prove the genuine use of the trademark for goods and services other than sandwiches. Against these claims, McDonald’s replied that the use of the mark for the sandwich shall also be considered as “use” for its ingredients and, in any case, although considering evidence of use insufficient for all the goods and services for which the trademark was registered, the request for revocation should have been at least partially rejected.

The Cancellation Division stated that the affidavits filed by McDonald’s, although admissible as evidence of use, have a reduced probative value because they originate from the interested party, whose perceptions may be more or less affected by its personal interest in the matter. The importance of this information must be valuable in view of other items of evidence that must support the same information. In fact, the assessment of genuine use entails a degree of interdependence so factors such as the nature of the goods and services, the characteristics of the market concerned, the territory, the commercial volume, duration and frequency of use, must be taken into account.

In the case at issue, EUIPO noted that the evidence submitted by McDonald’s originate from the EUTM proprietor itself, with the exception of some printouts originating from the Internet. With regard to the latter documents, the Cancellation Division stated that the mere presence of a trademark on a website is, of itself, insufficient to prove genuine use, unless the website also shows the place, time and extent of use or this information is otherwise provided. In particular, the value of the Internet extracts in terms of evidence can be strengthened by evidence related to Internet traffic and the number of orders made by customers in the relevant period and territory. The Cancellation Division underlined the impossibility of establishing a connection between McDonald’s websites which show products marked with the trademark “Big Mac” and the number of products offered or sold. As regards brochures and packaging depicting the contested EUTM, according to the Cancellation Division, that evidence doesn’t provide any information about how these documents were circulated, who they were offered to, or whether there were actual or potential sales of products.

As regards the Internet website en.wikipedia.org, the Cancellation Division noted that Wikipedia cannot be considered a reliable source of information as contents can be amended by users and, therefore, these could only be considered relevant as far as they are supported by other pieces of independent concrete evidence.

In view of the above, the Cancellation Division concluded that the documents analysed do not provide conclusive proof that the products marked with the trademark “Big Mac” are offered for actual sale, as there is no confirmation of any commercial transactions. Furthermore, even if the goods were offered for sale, there is no data about how long they were offered on the given web page or in other ways, and there is no information of any actual sales taking place or any potential and relevant consumers being engaged. In addition, there is no single piece of evidence that refers to any of the registered services being offered under the contested EUTM.

Based on the above, the Cancellation Division concluded that the evidence furnished by McDonald’s is insufficient to prove that the EUTM was genuinely used in the relevant territory during the relevant period of time. The factors of time, place, extent and nature of use must be considered cumulative and so this means that the evidence must provide sufficient indication of all of these factors in order to prove genuine use. The lack of one of these indicators results in the rejection of the evidence, because it is insufficient. Therefore, the application filed by Supermac’s was accepted and the contested trademark was revoked in its entirety from the date of the application for revocation, costs borne by McDonald’s.

McDonald’s has already announced that it will file an appeal.