Trade mark revocation is something we’ve covered in detail in the past. However, a recent high profile case makes it worthwhile revisiting this topic area.
There is a burger war happening. The Ireland-based fast-food chain, Supermac’s, filed a trade mark revocation against McDonald’s Big Mac with the EUIPO. It states that the mark wasn’t put to genuine use over a period of five years.
The trade mark was registered under three classes:
- Class 29: Foods prepared from meat, pork, fish, and poultry products, meat sandwiches, fish sandwiches, pork sandwiches, chicken sandwiches, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles and deserts
- Class 30: Edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar
- Class 42:Services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and drive-through facilities; preparation of carry-out foods; the designing of such restaurants, establishments and facilities for others; construction planning and construction consulting for restaurants for others
A ‘use it or lose it’ principle applies to EU trade marks, with marks older than five years vulnerable to revocation. Unless the holder can sufficiently evidence legitimate use during that time.
The revocation decision
When it comes to revocation proceedings on the grounds of non-use, the burden of proof lies with the trade mark owner, not the applicant.
Although McDonald’s submitted the following evidence:
- Three affidavits signed by McDonald’s representatives detailing sales figures for the period 2011-2016;
- Brochures and printouts of advertising posters, dated between 2011 and 2016;
- Printouts from a number of McDonald’s websites, dated between 7/1/2014 and 3/10/2016;
- A printout from a Wikipedia entry (in English) providing information on McDonald’s Big Mac.
It was decided that the evidence was insufficient to prove genuine use during the period in question. Among other things, they failed to provide third-party evidence and the brochures supplied didn’t give any details about how they were circulated and whether they led to actual purchases.
The EUIPO concluded:
Even if the goods were offered for sale, there is no data about how long the products 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, either through an offer or through a sale. Finally, as far as the relevant services are considered, there is no single piece of evidence that refers to any of the registered services being offered under the EUTM.
Supermac’s victory dance
What made Supermac’s bring this action?
Well, the existence of the Big Mac trade mark had stalled its ambitions of expanding beyond Ireland. This was all because McDonald’s argued that the similarity between Big Mac and Supermac would confuse customers.
“Supermac’s are delighted with their victory in the trademark application and in revoking the Big Mac trademark which had been in existence since 1996,” founder Pat McDonagh told Reuters in an email.“This is a great victory for business in general.”
This goes to show, even the biggest names are not immune to trade mark revocation. Plus, it’s all about the evidence, which is something a professional trade mark attorney can help you with.
To learn more about trade mark revocation: