Irish fast-food chain Supermac has successfully applied to revoke McDonald’s European Trade Mark registration for BIG MAC (EUTM 000062638) on the basis of non-use, pursuant to Article 58(1)(a) of the European Trade Mark Regulation. The revocation action was directed at all the goods and services covered by the registration in classes 29, 30 and 42 including, inter alia, ‘sandwiches’.
Supermac argued that McDonald’s BIG MAC mark had not been put to genuine use throughout the EU for a continuous period of five years following the date of registration. McDonald’s then had the burden of proof to demonstrate genuine use and submitted the following evidence:
> Three affidavits, signed by representatives of McDonald’s companies in the United Kingdom, Germany and France claiming significant sales figures of BIG MAC sandwiches between 2011-2016;
> Brochures and print-outs of advertisements showing BIG MAC meat sandwiches and packaging for the aforesaid dated between 2011-2016;
> Printouts of various McDonald’s European websites taken between 2014-2016 depicting a variety of sandwiches including BIG MAC sandwiches; and
> A print out from Wikipedia providing history of the BIG MAC hamburger.
Assessment of evidence
Article 19(2) of the EUTMR expressly states that written statements (referred to in Article 97(1)(f) EUTMR) are admissible for both proof of use and as a means of submitting evidence. However, it has been well established that material produced by independent third parties possesses higher probative value than evidence submitted by the owner or an interested party. The value of such statements is reliant upon the supporting documentation, such as advertisements, sales figures and third party sources.
In assessing whether genuine use has been made of a mark throughout the EU, the Cancellation Division will have regard to all the relevant facts and circumstances to establish whether commercial exploitation of the mark is more than merely token. Factors such as the territorial scope and characteristics of the market will be taken into consideration.
McDonald’s submitted a collection of brochures and print-outs from websites depicting the BIG MAC mark during the relevant period in relation to some of the goods, namely, sandwiches. However, the screen-shots failed to demonstrate the price point of the relevant goods, how they could be purchased, number of visitors to the sites and whether any visits resulted in subsequent sales.
The Cancellation Division held that the mere presence of a trade mark on a website is not, in itself, sufficient to prove genuine use of a trade mark. Additional evidence such as traffic data, geolocation of users, pricing, how users can purchase the relevant goods under the mark and accompanying sales figures attributable to the websites would have helped demonstrate the extent of use throughout the relevant territory.
In addition, McDonalds failed to submit any evidence documenting the geographical reach of the brochures, such as where they were circulated and the number of subsequent sales. Whilst the items submitted showed use of the BIG MAC mark in relation to some of the relevant goods during the relevant period, the Cancellation Division did not consider the evidence sufficient to establish a real commercial presence to support the turnover and sales figures submitted in McDonalds’ affidavits.
In the absence of any additional evidence to support the statements made in the Wikipedia articles, the Cancellation Division considered this evidence alone to be unreliable and insufficient to prove genuine use of the BIG MAC mark.
Reviewing the evidence submitted as a whole, the Cancellation Division held that the materials submitted were insufficient to demonstrate the extent of the use. Other than exhibiting the sign in relation to some of the relevant goods, the evidence submitted failed to demonstrate real commercial presence of the BIG MAC mark in relation to the relevant goods and services. As a result the revocation action was wholly successful and the BIG MAC mark revoked in its entirety.
The current case serves as a reminder to brand owners to ensure the evidence submitted shows a clear link between use of the mark in the relevant territory and a real commercial presence for the relevant goods/services. Pursuant to Article 95(1) EUTMR nothing can be taken as read or left to the Office to examine of its own accord.
This is particularly important for large corporations where a higher standard of proof is expected having regard to all the facts, circumstances, and the characteristics of the marketplace. It also serves as a reminder to include reliable independent sources where possible, in addition to affidavits that are fully supported by well documented evidence.