“Anything but a BIG MAC”? - not a piece of cake

“Anything but a BIG MAC”? - not a piece of cake

“Anything but a BIG MAC”? - not a piece of cake

On 8 March 2019 the McDonald’s has filed an appeal against the decision of the European Intellectual Property Office (EUIPO) of 11 January 2019 in which the EUIPO has revoked McDonald’s iconic ‘BIG MAC’ trademark. The application was filed by Supermac’s, an Irish fast-food company who sought out to take away BIG MAC, because the company’s expansion into continental Europe was problematic as his name - Supermac’s - is too similar to the sandwich offered by McDonald’s. The Irish company was trying for years to facilitate its access to the European market by requesting trademark protection of its own name, but the predecessor of the EUIPO, the Office for Harmonization in the Internal Market (OHIM) granted only partial protection for the ‘Supermac’s’ trademark in 2016. Considering the resemblance and the likelihood of confusion with the ‘BIG MAC’ trademark the OHIM only authorized restricted use of the ‘Supermac’s’ trademark: it can be used as a company name, but the company is not entitled to sell meat or hamburger, nor to provide food services under this company name.

No wonder the Supermac’s regarded the ‘BIG MAC’ trademark as a main obstacle impeding its access to the European market and requested its revocation. According to the Irish company, there is no legitimate reason for the trademark since it was not put to genuine use for the five years preceding the motion (2012-2017) in the territory of the European Union. The trademark proprietor submitted various evidence to prove otherwise. McDonald’s exhibited brochures, menus, packaging, marketing material and affidavits from employees. All this originating from the three economically most important EU member states (UK, Germany, France) and containing the denomination ‘BIG MAC’. McDonald’s even submitted a printed version of a Wikipedia page, which defines BIG MAC as “a hamburger sold by international fast food restaurant chain McDonald’s”.

The EUIPO has found the evidence to be insufficient since McDonald’s had not submitted any documents confirming actual sales of the sandwich. The packaging and marketing material alone do not prove that any sales have taken place. Moreover, the affidavits which come from employees of the proprietor company are questionable, given their strong connection to McDonald’s. The EUIPO also mentioned that a site like Wikipedia, where the content can be edited by its users cannot be viewed as a reliable source of information. The EUIPO drew the McDonald’s attention to the fact that in order to establish the genuine use of a mark the real commercial presence has to be proven. The evidence must establish the nature, territorial scope, duration, frequency and commercial volume of the use of the mark. In consequence it is insufficient that a mark is widely known and that it could be considered commonly known, real data is needed about the market turnover.

The EUIPO’s decision seems to represent a sanction against McDonalds for failing to supply its business information. One key lesson that can emerge from this case is that the genuine use of the mark has to be proven by actual market data.

The procedure initiated by Supermac’s also highlighted that 'BIG MAC' is a trademark with over-broad class specifications since it was protected not only as food, or sandwich, but also as service rendered or associated with restaurants. It is worth recalling that it is not unfamiliar for the McDonald’s as business strategy to request trademark protection for denominations starting with ‘Mc’ for the widest possible range of goods and services, thus rendering it difficult for the competitors to enter the market.

As far as the decision of the EUIPO is concerned, the public is rejoicing in the triumph of David over Goliath. Yet it has to be taken into account that the decision of the authority is not final, and that according to the EUIPO’s database the ‘Big Mac’ trademark benefits from a protection in the European Union similar to the ‘BIG MAC’ trademark in the same classes of goods since 11 April 2018. One has to be careful whether to use the trade mark, as - after a minor transformation - it is still protected in the European Union.

In the context of this case there is a good reason to raise the question of how the interests of a company can be effectively represented against those who are trying to make the access to the market difficult by using trademark protection as a barrier. Could it be considered as an abuse of rights if the McDonald’s registers the ‘Big Mac’ trademark while a revocation procedure of its almost completely identical trademark is still ongoing? The new registration renders the revocation completely meaningless as even if the Supermac’s will be successful at it, its access to the European market remains impeded as a result of the newly registered ’Big Mac’ trademark.