06.06.2024
When faced with a revocation application, a trademark owner must provide evidence that the trademark has been in use for the goods and services it is registered in - whoever the owner might be.
The General Court of the European Court of Justice (ECJ) has yesterday partially revoked the “Big Mac” trademark owned by McDonalds, which has been so registered under Class 29 (which includes foodstuffs consisting of meat and poultry products); Class 30 (which includes edible foodstuffs); and Class 42 (which includes fast food restaurant services) since 1996.
Supermac, a small Irish fast food restaurant chain that has been in business since 1978, has yesterday won an important legal battle against the fast food giants McDonalds in relation to the “Big Mac” trademark.
The Court battle started in 2015, where the Irish fast food restaurant chain attempted to register the “Supermac” name as a trademark in the EU with the intention to expand their business into the EU. This, in turn, prompted the fast food giants to oppose the trademark registration by primarily arguing that a likelihood of confusion or association would arise amongst customers given the similarity in the names.
In fact, in 2016, McDonalds had a partial victory since Supermac was only allowed to register the trademark for its restaurant name but not for various food and beverage items.
In response to this, in 2017, Supermac lodged a revocation application before the European Union Intellectual Property Office (EUIPO), based on Art. 51 (1)(a) of Regulation (EC) No. 207/2009, in an attempt to bring to an end the exclusive use of the term “Big Mac” by McDonalds in the fast food industry.
The Irish fast food chain argued that by not putting into genuine use the “Big Mac” trademark in the EU within a continuous five-year period in connection with certain goods and services under the registered Classes the trademark was registered in, McDonalds were engaging in “trademark intimidation, registering brand names that are simply set aside to be used against future competitors”. This reasoning was upheld by the EUIPO’s Cancellation Division who accepted the revocation application, revoking the “Big Mac” mark for non-use.
Shortly after, McDonalds appealed this decision before the EUIPO’s Board of Appeal who overturned the decision of the Cancellation Division; reinstating the protection to the “Big Mac” trademark. Supermac appealed the decision further before the EU General Court - which has yesterday given its judgement.
The EU General Court stated that the use of a trademark cannot be determined by mere presumptions and probabilities but must be demonstrated by solid and objective evidence. In reaching its conclusions, it analysed the evidence brought before it to determine whether the “Big Mac” trademark was being put to genuine use in connection with the goods and services it was registered in. The General Court ruled that the evidence submitted in connection with “chicken sandwiches” under Classes 29 and 30, was not enough to show genuine use. Additionally, the Court also found that the use of the “Big Mac” trademark in relation to “fast food restaurant services” under Class 42 was also not enough to provide genuine use.
Consequently, the General Court declared the “Big Mac” trademark partially revoked, annulled the decision of the Board of Appeal of the EUIPO and amended it accordingly: whilst retaining the other goods such as “meat sandwich” under Classes 29 and 30, it revoked the goods in relation to “chicken sandwiches” under Classes 29 and 30 as well as “foods prepared from poultry products” under Class 29 and finally, “services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities” and “preparation of carry-out foods” under Class 42.
This pivotal judgement certainly proves that even well-known marks need to provide evidence of genuine use when requested, so as to determine that the registration of the trademark was not made in a way to hinder other applicants from registering their own, but to actually put the trademark to genuine use in relation to the goods and services it is registered in. By its decision, the EU General Court has delivered a significant ruling the outcome of which will pave the way in safeguarding the IP rights of minor businesses against the use of trademarks by large multinationals, whilst also upholding the principle of fair competition.
On a final note, it is evidently clear that now more than ever, careful consideration needs to be made when applying to register for a new trademark and for businesses to plan ahead when deciding to protect their brand.
By: Dr. Clint Meli Sciberras and Dr. Brandon Meli
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