April 3, 2023

Is the EU trade mark “BIC MAC” genuinely used?

One is tempted to answer: Yes, of course, that’s the McDonald’s burger. Yes, it is, but the factual and legal situation is not so simple.

An EU trade mark may be revoked at the request of a third party if, within a period of five years from the date of registration, it has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered.

If a trade mark is challenged for lack of use, the trade mark proprietor must prove the place, time, extent and nature of use of his trade mark in relation to the goods and services for which it is registered within the five years preceding the filing of the request for revocation, provided that at that time the trade mark had been registered for at least five years.

Facts of the case

The EU word mark No. 62 638 ‘BIG MAC’ was applied for at the EUIPO on 1 April 1996 and registered on 22 December 1998.

On 11 April 2017, the Irish company Supermac’s (Holding) Ltd. filed a request for a declaration of revocation of the EU word mark No. 62 638 ‘BIG MAC’ on the grounds that the EU trade mark had not been put to genuine use in relation to the goods and services protected, namely:

• 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 29);
• 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 30);
• 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 (Class 42).

The proprietor therefore had to prove genuine use of its mark between 11 April 2012 and 10 April 2017.

The documents it submitted to the EUIPO consisted essentially of

• affidavits from representatives / employees of the trade mark proprietor
• printouts of the trademark owner’s web pages, and
• a printout of an an extract from the article on the ‘Big Mac’ in Wikipedia.

Decision of the Cancellation Division

By decision of 11 January 2019, the Cancellation Division at the EUIPO revoked the contested EU trade mark in its entirety with effect from 11 April 2017. It gave the following main reasons for its decision:

• The affidavits submitted by the representatives / employees of the trade mark proprietor have less probative value than such affidavits submitted by independent third parties. The other documents submitted were also not suitable to corroborate the statements made in the affidavits, such as sales and turnover figures.
• Although the use documents refer to at least some of the goods protected by the contested mark, such as sandwiches, the proprietor has not succeeded in proving sufficiently the extent of the use of the mark in the EU.
• Wikipedia entries cannot in themselves be considered reliable sources of information unless they are supported by further independent concrete evidence. However, the further evidence submitted would not provide sufficient information on the extent of the use.

In summary, the Cancellation Division found that the submitted evidence of use was not sufficient to prove that the products bearing the EU trade mark ‘BIG MAC’ were actually offered for sale, as there was no evidence of actual sales, either online or via brick-and-mortar operations. It was also not apparent from the documents submitted that the EU trade mark had been used for the protected services in Class 42. Thus, the required extent of genuine use would already be lacking.

Appeal of the trade mark proprietor

On 8 March 2019, the trade mark proprietor filed an appeal against the decision of the Cancellation Division and requested that the decision be annulled in its entirety.

In his statement of grounds of appeal, the trade mark proprietor submitted further documents to prove genuine use of its trade mark ‘BIG MAC’, including the following:

• Opinion polls conducted in February/March 2019 in Germany, France and the UK, providing information on awareness of the term ‘BIG MAC’ among consumers in general and among fast food consumers in Germany, the UK and France
• Several online newspaper and magazine articles about the so-called ‘Big Mac Index’
• Photos of original packaging used in connection with the ‘Big Mac’ product in Germany, the UK and in France from 2012 to 2017
• Copies of invoice receipts from McDonald’s restaurants showing sales of Big Mac sandwiches in Germany, the UK and in France from 2012 to 2017
• Screenshots of television commercials broadcast during the relevant period from 2012 to 2017, accompanied by affidavits from employees of the advertising agencies that created the adverts and/or purchased time slots from the television stations
• Photographs showing adverts from 2016 at bus stops in the UK, accompanied by an affidavit signed by an employee of the agency that produced the adverts for the trade mark owner
• Photographs of menus used in McDonald’s restaurants in the UK and in Germany from 2013 to 2016.

The cancellation applicant contested the admissibility of the additional evidence submitted. It argued, inter alia, that this evidence was entirely new and could already have been submitted to the Cancellation Division.

Decision of the Fourth Board of Appeal

In its decision of 14 December 2022 (see R0543/2019-4), the Fourth Board of Appeal partially upheld the trade mark proprietor’s appeal and found genuine use of the trade mark ‘BIG MAC’ for

• foods prepared from meat and poultry productsʼ; ʻmeat sandwichesʼ and ʻchicken sandwichesʼ in Class 29; and ʻedible sandwichesʼ; ʻmeat sandwichesʼ and chicken sandwichesʼ in Class 30

as well as for

• 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; preparation of carry-out foods in Class 42.

With reference to Art. 95(2) EUTM and Art. 27(4) EUTMIR, the Board held that the conditions for taking into account the additional evidence submitted by the proprietor with the statement of grounds of appeal were fulfilled. This evidence only supplements the evidence already submitted to the Cancellation Division and concerns the use of the disputed mark.

However, the Board of Appeal did not find genuine use for the other goods covered by the EU trade mark ‘BIG MAC’:

• foods prepared from pork and fish products, fish sandwiches, pork sandwiches, preserved and cooked fruits, eggs, milk, milk preparations, desserts’ in Class 29; and
• ‘pork sandwiches, fish sandwiches, biscuits, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sugar’ in Class 30.

The ‘Big Mac’ is perceived by consumers as the ultimate ready-to-eat fast food product, namely a ready-made meat sandwich. However, the documents submitted did not show that consumers in general would associate certain ingredients, such as vegetables, cheese, pickles, bread, sauces and seasonings, with the trade mark proprietor’s undertaking. In particular, it was not clear from the use documents that the trade mark proprietor would offer ‘Big Mac cheese’, ‘Big Mac pickles’ or ‘Big Mac seasonings’. If consumers wanted to buy such ingredients, they would go to a grocery store rather than a fast food provider.

The Board also found that there was no genuine use of the mark ‘BIG MAC’ for:

• services rendered or associated with franchising restaurants and other establish­ments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities in Class 42.

The trade mark proprietor had failed to prove that it offered, advertised or actually provided franchise services. In particular, it had not provided franchise agreements, a royalty payment system or a list of franchisees, an offer of franchised restaurants, licence agreements for the use of certain industrial property rights, or evidence of the business model or its corporate structure.

The trade mark proprietor had also failed to provide any evidence of use for the other services in Class 42 covered by the EU trade mark ‘BIG MAC’, namely:

• the designing of such restaurants, establishments and facilities for others; and construction planning and construction consulting for restaurants for others.

Comment

This case illustrates once again that even companies with well-known trade marks must carefully prove genuine use of their trade marks for the goods and services protected by them.

In addition, care should be taken to apply for and register a trade mark only for the goods or services for which it is used or intended to be used. Before applying for a trade mark, it should also be considered whether a trade mark is to be used only for a certain end product or also for certain subcategories, e.g. – as in this case – also for specific ingredients of the Big Mac sandwich.

SuperMac’s (Holding) Ltd. brought an action before the European Court in Luxembourg in February 2023 against the decision of the Fourth Board of Appeal (Case T-58/23). It now remains to be seen how the Court will assess the use documents submitted by the trade mark proprietor.