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15 January, 2019

EUIPO Revocation No 14 788 C Supermac’s (Holdings) Ltd v McDonald’s International Property Company, Ltd

The EUIPO’s Cancellation Division has just issued a decision in case No 14 788 C, revoking McDonald’s EUTM registration No 62 638 for BIG MAC in classes 29, 30 and 42 in its entirety on the grounds of non-use.

Supermac applied to revoke the BIG MAC registration on the grounds it was not put to genuine use during the five year period following the date of registration in relation to any of the registered goods and services. McDonald’s filed evidence of use that included a claim of significant sales in relation to ‘Big Mac’ sandwiches along examples of the product packaging, promotional brochures, menus, and website pages.

The Cancellation Division were critical of the evidence, noting that whilst some of the evidence related to the relevant time period and to some of the Member States of the EU, McDonald’s failed to prove the extent of use of its mark. Furthermore, the EUIPO generally values independent, third party evidence above that emanating directly from the proprietor.

In relation to the website print outs, the Cancellation Division stated that “the mere presence of a trade mark on a website is, of itself, insufficient to prove genuine use unless the website also shows the place, time and extent of use or unless this information is otherwise provided”.

To further strengthen the value of the website extracts evidence was required that the specific website has been visited (e.g. data on internet traffic/hits per day from within the EU) and that orders for the relevant goods and services have been made through the website by a certain number of customers in the relevant period and in the relevant territory. There was no evidence of being able to purchase the goods online nor of a single order being placed through McDonald’s website, meaning a connection could not be made between the website and the items sold.

The Cancellation Division also noted, as they have in previous decisions, that Wikipedia entries cannot be considered as a reliable source of information.

The Cancellation Division found the evidence as a whole did not provide conclusive proof that the goods or services were offered under the BIG MAC mark in the EU within the relevant period.  Revoking the registration, the Cancellation Division reminded the parties that “[i]t is up to the EUTM proprietor to show such use in a manner which allows a reasoned conclusion to be made that the use is not merely token”.

The decision can be appealed and we note McDonald’s also hold a later registration for BIG MAC that cannot be challenged for non-use at this stage.