McDonald's BIG MAC trade mark – General Court gives decision on evidence of genuine use

In a decision that, practically, provides for only a tiny loss of protection for the behemoth brand and trade mark, on 5 June 2024 the European General Court (General Court) partially revoked McDonald's BIG MAC trade mark (the EUTM) in the EU (Supermac's (Holdings) Ltd v EUIPO (Case T‑58/23)).

The General Court did so on the basis that McDonald’s did not provide the requisite evidence that the EUTM has been put to genuine use in respect of "chicken sandwiches", "foods prepared from poultry products" (largely on extent of use of the mark on these goods) and in relation to "services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities".

Background

In 2017, Supermac's applied to revoke the EUTM (filed in 1996) for non-use in classes 29 and 30 (meat and poultry products, chicken and edible sandwiches etc), and class 42 (services associated with operating restaurants, drive through facilities etc) (together, the Classes).

In a 2019 decision that surprised many, given the reputation of the BIG MAC mark across the globe, the Cancellation Division of the EUIPO upheld Supermac's application and revoked the EUTM in the Classes, finding that McDonald's evidence did not prove the "extent of use" of the EUTM in the Classes (see our previous article here).

McDonald's appealed this decision to the EUIPO's Board of Appeal (the Board of Appeal) and submitted further evidence of use of the EUTM in Germany, France and the UK. In this hearing, McDonald's was partially successful and was permitted to retain the EUTM for certain goods and services in the Classes, for which genuine use had been established, namely: foods prepared from meat and poultry products, meat and chicken sandwiches in class 29, edible, meat and chicken sandwiches in class 30 and services associated with operating restaurants or providing food and drink for consumption in class 42.

Supermac's appealed to the General Court.

The General Court's decision

The General Court partially allowed the appeal: limiting McDonald's EUTM to meat products and meat sandwiches but revoking protection for poultry products and chicken sandwiches in classes 29 and 30, and services associated with operating restaurants in class 42 for the following reasons:

1. Classes 29 and 30: the evidence submitted by McDonald's in the administrative proceedings included screenshots taken from the McDonald's France Facebook page and screenshots of a TV advert relating to the Grand BIG MAC Chicken, broadcast in France in 2016. The General Court acknowledged that the evidence showed the goods represented under the EUTM in the context of advertisements in France during the relevant period. However, the evidence did not provide any indication of the extent of use of the EUTM in connection with those goods as regards the volume of sales, the length of the period during which the mark was used, the frequency of use and the prices at which those goods were marketed. The evidence was therefore deemed to be insufficient to establish that there was real commercial use of the EUTM in connection with ‘chicken sandwiches’. Further, while evidence of the sales of the beef Big Mac burger was provided between 2013 to 2016, that data did not specify the sales of any chicken sandwiches.

    

2. Class 42: for services rendered or associated with operating restaurants in class 42, the General Court considered that the Board of Appeal had erred in finding a connection between the EUTM and these services: use of the EUTM in connection with goods cannot, in and of itself, provide use in connection with services. Instead, such use needed to be demonstrated by "solid and objective evidence of actual and sufficient use of the trade mark on the market concerned". None of the evidence submitted by McDonald's referred to the services concerned, even if they are understood as fast-food restaurant services – the evidence provided was solely in relation to the use of the EUTM for chicken sandwiches, as opposed to the restaurant / franchise service itself.

This action may yet see a final rehearsal of arguments – McDonald's has the option to appeal this decision to the Court of Justice of the EU.  There is also a UK dispute over the use of McDonald's "BIG MAC" trade mark.

Key takeaways

Some reporting on this decision (including the General Court's own press release titled “McDonald’s loses the EU trade mark Big Mac in respect of poultry products”) did not reflect the actual impact of the decision of the General Court.  The partial revocation related to ‘chicken sandwiches’ and ‘foods prepared from poultry products’ only – the General Court permitted McDonald's to retain its EUTM for ‘edible sandwiches’, ‘meat sandwiches’ and ‘foods prepared from meat products’, which arguably cover chicken sandwiches in any event. Therefore, in practical terms, the scope of McDonald's EUTM registration has not been limited as much as the headlines would initially suggest.

This decision somewhat promotes the practice of applying for broader trade mark specifications, which may afford greater flexibility for new product variations (i.e. "meat sandwiches" rather than "beef" or "chicken" burgers) – but that of course needs to be balanced with avoiding overly broad specifications which may attract a finding of bad faith (i.e. SkyKick UK Ltd v Sky Ltd).

When creating a product that will sit alongside a well-established product, and which will be used under an existing trade mark registration, food and drink brands should consider collecting and retaining sophisticated and relevant evidence of use as early as possible that will meet the genuine use test. The General Court's decision also drew attention to the following important points on genuine use:

• Indicators and evidence of use must establish the place, time, extent and nature of use of the trade mark via the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing.
• A reminder that there is ‘genuine use’ of a trade mark where the mark is used in accordance with its essential function, which serves to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services.
• Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark.
• When assessing genuine use, all facts and circumstances relevant to establishing whether the commercial use of the mark in the course of trade is "real" are considered including relevant practices in that economic sector that maintain or create market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark.
• Genuine use is not based on probabilities or presumptions, but on solid and objective evidence of actual and sufficient use of the trade mark on the market concerned.
• To show extent of use, the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use must be considered.