Supermac’s take on the BIG MAC – EU Trade Mark Revocation

Monday 22 July, 2024

McDonald’s has faced a significant setback in the European Union, with the EU General Court ruling that its BIG MAC mark will now only cover meat sandwiches, edible sandwiches and foods prepared from meat products. This decision has been described as a wakeup call to owners of well-known trade marks.

Background

The European Union Intellectual Property Office (EUIPO) dismissed the Irish fast-food company, Supermac's, application for revocation of the BIG MAC mark and confirmed McDonald's use of the term for sandwiches using beef or chicken. Supermac’s later filed an action against EUIPO and McDonald’s, seeking partial annulment of the EUIPO’s decision.

McDonald’s contended the claim for annulment was inadmissible as the specification ‘meat sandwiches’ clearly covers ‘chicken sandwiches’.

EU General Court’s Decision

The Court determined that McDonald’s had failed to provide sufficient evidence of genuine use of the BIG MAC mark for products beyond meat sandwiches. The court sided with Supermac’s, revoking the registration of the BIG MAC mark for chicken sandwiches and foods prepared from poultry products.

The Court also revoked McDonald’s registration for services associated with operating restaurants and drive-through facilities, stating that the previous court had misconstrued the classification. Even if the classification had been correct, the court found that McDonald’s evidence did not support genuine use of the BIG MAC mark across all the categories, or use beyond the traditional Big Mac burger.

Throughout the judgment, the Court emphasised that genuine use of a trade mark cannot be proven through probabilities or presumptions but must be demonstrated with solid and objective evidence. The court provided that evidence of use must establish the time, place, extent and nature of the use of the trade mark, in particular the commercial volume of overall use. The court found that, although evidence of advertisements of the ‘Grand Big Mac Chicken’ in France showed the contested mark during the relevant period, the evidence did not provide indication of the extent of use of the mark as required.

Key takeaways

The Court’s decision underscores the necessity of providing specific, solid evidence of genuine use to maintain trade mark rights, stating that genuine use cannot be token use just to preserve rights.  It also clarifies the interpretation of broader categories and subcategories within classes. The decision serves as a reminder that reputation alone does not guarantee the continuation of trade mark registration, emphasising the need for substantiation of a mark’s use across all claimed categories.