Wake-up call for McDonald’s – new EUIPO decision saves EU Trademark “BIG MAC”

What a ride and wake-up call for McDonald’s. 

burger_wecker_mitel_600px.jpg

After the European Union Intellectual Property Office (EUIPO) had been of the opinion in the first instance that genuine use of EUTM 000062638 “BIG MAC” (word mark) had not been proven sufficiently by McDonald’s, the EUIPO’s Board of Appeal (BoA) now reversed the first-instance decision – also after classifying all kinds of additional evidence as eligible for consideration.

The following blog article shows how hard it may be nowadays for trademark owners to prove sufficient use of their trademarks for the goods and services registered. Trademark owners must be careful and diligent when compiling so-called “proof-of use” materials. And, always keep in mind that the standards to prove use are different around the world!

1. First instance proceedings before the EUIPO Cancellation Division (CD)

On 11 January 2019, the EUIPO caused quite a stir among trademark experts with its first instance decision (Case no. 000014788) that EUTM 000062638 “BIG MAC” of McDonald’s International Property Company, Ltd. is not genuinely used for the goods and services for which it had been registered, which are the following:

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, desserts;

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 for 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.

In its first instance decision, the EUIPO inter alia assessed that

• three affidavits (with attached examples of packaging, promotional brochures etc.) have “less weight than independent evidence”;
• the EUIPO proprietor failed to prove the extent of use of its mark;
• all remaining evidence originates from the EUTM proprietor itself;
• Wikipedia entries cannot be considered as a reliable source of information;
• taking into account the submitted evidence as a whole, the documents do not provide conclusive information that the products marked with the EUTM (“BIG MAC”) are offered for actual sale, as there is no confirmation of commercial transactions and
• there is no single piece of evidence that refers to any of the registered services being offered under the EUTM.

2. Appeal proceedings before the EUIPO Board of Appeal (BoA)

McDonald’s, of course, appealed and the BoA has now it its decision of 14 December 2022 – quite rightly – acknowledged that McDonald’s has sufficiently proven genuine use of the mark “BIG MAC” for at least the following goods and services (in bold):

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, desserts;

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 for 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.

1. Evidence considered in the appeal stage

The BoA of course examined the evidence McDonald’s had provided in the first instance proceedings.

However, in addition to that, McDonald’s had submitted a large amount (700 pages) of additional evidence as to genuine use in the appeal stage, namely

• consumer surveys
• online newspaper and magazine articles regarding the “BIG MAC Index” (which is an informal way of measuring the purchasing power parity between two currencies)
• photographs of original packaging used in relation to the “BIG MAC” product
• various copies of receipts and/or excerpts from electronic cash registers
• screenshots of TV commercials
• photographs showing the adverts used at bus stops
• advertising material
• photographs of menus in McDonald’s restaurants
• news articles and third party publications (for example screenshots of YouTube videos)
• Google analytics report relating to McDonald’s websites displaying the “BIG MAC” product
• a financial audit report
• further affidavits and a letter of confirmation.
• further affidavits and a letter of confirmation.

The Cancellation Applicant of course argued that the additional evidence should be rejected in its entirety because it constitutes a significant and substantial part of the evidence of use and was only submitted at the appeal stage without due cause.

It is very interesting from a procedural point of view that the BoA considered all the approximately 700 pages of newly submitted documents from McDonald’s and did not reject them as delayed. They have, however, dealt with the question of admissibility of these documents very carefully and concluded that the conditions for accepting the additional evidence submitted by the EUTM proprietor have been met, as the additional evidence only supplements and builds on the evidence submitted before the CD.

2. Evaluation of the evidence – overall assessment

As regards the evidence provided in the first instance proceedings, the BoA found that the affidavits cannot be disregarded as merely internal documents deriving from the EUTM proprietor. Their probative value was supported by all the other evidence, including the evidence on the sale, marketing and restaurant services. As to the Wikipedia extracts, the BoA explained that it contains many references and external links, including references to reputable sources such as articles in know newspapers and magazines and that, therefore, it has confirmatory value.

Remarkable regarding the consumer surveys is the BoA’s explanations in response to the Cancellation Applicant’s arguments that they do not date from the relevant time period. Here (cf. 82), the BoA noted that “it would be unreasonable, rigorous and highly economically burdensome to require the proprietor of each mark to have consumer surveys covering all periods of the EUTM’s registration available for the entire duration of the EUTM’s validity.” Moreover, the market surveys would be “supplementary evidence which reflects the degree of awareness of the relevant public of that particular mark, which, particularly in the case of such an extensive awareness of the “BIG MAC” mark in the relevant market, is built up over a long period of time, in the order of years.”.

In sum, the BoA found that the evidence, taken as a whole, fulfils all conditions (place, time, nature and extent) of use, but not with respect to all registered goods and services. Well, the most important goods and services for McDonald’s “BIG MAC” – food prepared from meat, meat sandwiches and restaurant services – should now still be included in the list of goods and services (slight exception: use for “franchising restaurants” in class 42 was not seen as proven; however “operating restaurants” is still included in class 42).

All in all, the BoA concluded that the evidence submitted during both stages shows that the EUTM “BIG MAC” was not only used to identify a specific product (sandwich), but also to distinguish the restaurant services provided by McDonald’s from similar services of other providers.

According to the BoA, the evidence as a whole proves that the EUTM proprietor has seriously tried to acquire, and actually keeps a significant commercial position in relation to the contested mark in the relevant market. “In fact, the Board confirms that this is also common knowledge” (cf. 191).

3. Comments

Even if the impression arises that the BoA was kind of generous, e.g. on questions of the admissibility of late submissions, the judgment is to be regarded as correct.

That the trademark “BIG MAC” is used in  most of the claimed goods and services should be completely out of the question. “BIG MAC” is probably  even to be considered a famous trademark. For us, it was out of question that McDonald’s could prove proper use of its trademark “BIC MAC” in the EU. However, the EUIPO decisions show that “lovelessly” compiled documents and mere own belief the mark is used will collide with the EUIPO Guidelines of proof of use and an extremely strict CD. In the appeal stage, McDonald’s made significant improvements in the documentation they submitted and the BoA rightly took corrective action.

It remains to be seen whether the Cancellation Applicant (Supermac’s (Holdings) Ltd.) will file an appeal to the General Court.