McDonald’s have suffered another trade mark loss to Irish fast-food chain Supermac through the European Union Intellectual Property Office.

Supermac applied to revoke the McDonald’s MC trade mark (Cancellation No. 14787C) after previous success in applying to revoke the BIG MAC trade mark earlier this year.

The MC mark was revoked on the grounds of non-use under article 58(1)(a) of the European Trade Mark Regulation, which under the decision notes that “the rights of the proprietor of the European Union trade mark will be revoked on application to the Office, if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union for the goods or services for which it is registered, and there are no proper reasons for non-use“.

ARGUMENTS FOR REVOCATION

The arguments put forward by Supermac were that:

– the MC mark has not, and has not ever been used to designate the goods and services of McDonald’s;

– MC is a common prefix for surnames throughout Ireland, the UK and elsewhere throughout Europe and there are a number of public houses, hotels, food items, beverages and restaurants which contain the prefix MC as part of a surname;

– combining an additional word to MC mark has a serious effect on the distinctive character of the mark (e.g. combining the mark with other words such as FLURRY, NUGGETS and MUFFIN); and

– McDonald’s does not and has never used MC on its own and that the additions are not separate and distinct from the combination with the MC element.

THE MC MARK

The EUIPO Cancelation Division looked at 10 uses of the MC mark put forward in evidence by McDonald’s including use within the “McDonald’s” name itself.

When looking at the time and place of use, the EUIPO was presented twenty annexes containing evidence of use within the EU. However the EUIPO found that some of the evidence did not fall within the relevant time period (11 April 2012 – 11 April 2017) for McDonald’s to show genuine use and so some of the evidence was not.

The Cancellation Division found that the use of MC in McDonald’s did not constitute use of the MC mark as it found that the use of Donald’s after MC was not an acceptable addition to the mark.

In contrast when looking at McRIB, McMUFFIN, McTOAST, McFISH, McWRAP, McWRAP, McNUGGETS and McCHICKEN, the Cancellation Division found the additional element to the MC mark was intended to describe the characteristics of the goods and/or main ingredient, so did not alter the distinctive character of the MC mark. They did not find this to apply to McFLURRY as FLURRY was not found to be descriptive/non-distinctive in itself. The EUIPO also looked at use in the form of BIG MAC and found that despite being phonetically similar, the insertion of the ‘A’ in MAC was found to substantially alter the visual appearance of the mark.

GENUINE USE

The Cancellation Division then went on to look at genuine use under Article 58(1)(a) EUTMR in the registered classes. The outcome was:

– partial revocation in class 29 in accordance with Article 58(2) EUTMR genuine use was only found for chicken nuggets, revocation included foods prepared from meat and poultry;

– partial revocation in Class 30 revocation included desserts biscuits and cakes, finding genuine use for edible sandwiches;

– revocation in class 32 due to McDonald’s not submitting evidence of genuine use for the registered goods which included non-alcoholic beverages; and

– revocation in class 43 as they found McDonald’s failed to prove use for restaurant services.

MOVING FORWARD

McDonalds have suffered another trade mark loss to Irish fast-food chain Supermac through the European Union Intellectual Property Office . Supermac successfully applied to substantially revoke the McDonald’s MC trade mark after previous success in applying to revoke the BIG MAC trade mark earlier this year (Cancellation No. 14787C)

The MC mark was revoked on the grounds of non-use under article 58(1)(a) of the European Trade Mark Regulation in classes 32 and 43. The mark partially remains in classes 29 and 30.