McDonald’s able to prove use of its BIG MAC EUTM

Posted: 20/03/2023

McDonald’s has successfully overturned the European Union Intellectual Property Office’s (EUIPO) decision that it failed to prove use of its EUTM ‘BIG MAC’ for the goods and services for which it is registered (a range of goods and services in classes 29, 30 and 42), by successfully applying to the Board of Appeal for permission (under Article 24(4) EU Trade Mark Regulation), and subsequently filing sufficient supplementary evidence.

In the original proceedings, Supermac filed a revocation application against the ‘BIG MAC’ EUTM for non-use. In revocation proceedings, the burden of proof to show genuine use of the trade mark in question lies with the trade mark owner. The evidence of genuine use that McDonald’s originally submitted was deemed insufficient by the EUIPO’s Cancellation Division. The evidence McDonald’s originally submitted consisted of three internal witness statements attesting genuine use of the trade mark in Germany, France and the UK, printouts of the McDonald’s website, and a printout of an extract of a Wikipedia article on ‘Big Mac’.

The Cancellation Division held that the internal witness statements should be given less weight due to lack of independence. The Wikipedia article was also given less weight, as Wikipedia users have the ability to edit articles. As a result, the Cancellation Division held that McDonald’s had failed to produce sufficient evidence of genuine use. Unsurprisingly, McDonald’s appealed the decision.

McDonald’s also applied for permission to file supplementary evidence of genuine use. The Board of Appeal allowed McDonald’s’ application on the basis that the facts and/or evidence were, on the face of it, likely to be relevant for the outcome of the case, and that they had not been produced at the time for valid reasons. The Board of Appeal decided that this condition had been met, in particular, because the ‘evidence in question reacts to the Cancellations Division’s findings (the assessment of the evidence of the contested mark)’.

The supplementary evidence filed contained an additional 13 annexes, including:

consumer surveys;
internet articles;
photographs of packaging;
copies receipts from electronic cash registered;
advertising materials;
Google Analytics data;
witness statements confirming advertising costs;
a financial audit report;
a witness statement of online sales figures of Big Macs in France; and
a witness statement of a German gastronomy association on the market position of McDonald’s and the Big Mac product.

This case demonstrates that, even for household names such as ‘BIG MAC’, it is still categorically important to provide detailed evidence of genuine use in the first instance.

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