McDonald's lost its BIG MAC registration for chicken burgers after the General Court ruled that McDonald's had not provided sufficient proof of use of the mark for the products in question.
Background
Supermac's, the less known of the two companies, is one of Ireland's largest fast-food chains with history starting from opening of its first restaurant in 1978. In 2017, McDonald's filed oppositions against two SUPERMAC’S EU trademark applications (application Nos. 015442023 and 016583379) based on, among others, its BIG MAC trademark (registration No. 62638), claiming likelihood of confusion. In response, Supermac's sought the cancellation of the BIG MAC trademark due to non-use. An EU-trademark registration can be canceled if the mark has not been used within five years of registration or if use has been suspended for more than five years.
McDonald's submitted proof of use, i.e. evidence of use of the trademark, to the EU Intellectual Property Office (EUIPO), but the EUIPO's Cancellation Division found it insufficient and thus canceled the registration entirely.
McDonald's appealed the decision and provided additional evidence of the use of its BIG MAC trademark to the EUIPO. The Board of Appeal accepted the submitted evidence and, in its 2022 decision (R 543/2019-4), found it sufficient, thus maintaining the registration for the following goods and services:
- Class 29: "Foods prepared from meat and poultry products, meat sandwiches, chicken sandwiches"
- Class 30: "Edible sandwiches, meat sandwiches, chicken sandwiches"
- Class 42: "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"
General Court's Judgement
This time, Supermac's appealed the decision to the General Court of the European Union, which rendered its judgment on June 5, 2024. According to Supermac's appeal, the BIG MAC registration should only be maintained for "meat sandwiches", in this case meaning hamburgers containing meat. They contended that McDonald's evidence was otherwise insufficient.
McDonald's evidence related to poultry products pertained to the "Grand Big Mac Chickens" product and included advertising posters, screenshots from TV commercials and Facebook posts. McDonald's also argued that "meat sandwiches" should cover "chicken sandwiches" as well.
The General Court concluded that McDonald's evidence for "chicken burgers" (or "chicken sandwiches" as listed in the trademark registration's goods specification) did not demonstrate the extent of use of the mark, such as sales volumes, duration, or frequency of use. The court also held that "chicken sandwiches" are not included in the term "meat sandwiches." Since sufficient evidence was not provided for chicken burgers, the term "foods prepared from poultry products" could not be maintained. Consequently, as the evidence for "meat sandwiches" was no longer contested, "foods prepared from meat products" and "sandwiches" were to be maintained.
In addition to the issue of chicken burgers, there was also a significant difference of interpretation between the General Court and the Board of Appeal regarding the services covered by the BIG MAC trademark registration. According to the General Court, none of the evidence submitted pointed to services, and the reputation of the MCDONALD’S mark related to the services offered could not be linked to the BIG MAC mark in question.
Therefore, the BIG MAC registration remains valid, but only for the following goods (covering hamburgers containing meat):
- Class 29: "Foods prepared from meat products, meat sandwiches "
- Class 30: "Edible sandwiches, meat sandwiches"
Each party was ordered to bear its own costs.
Conclusions
Even in the third part of the Big Mac saga, it seems likely that McDonald's could have maintained its registration for chicken burgers with more comprehensive proof of use. It is not only a matter of the mark having been used for the products in question, but also of being able to provide evidence of such use. It is important to remember that this decision concerns only a single trademark registration, and that McDonald's still has numerous other Big Mac registrations valid internationally, including in the EU, covering chicken burgers (registration No. 017305079).
The collection and submission of proof of use should therefore not be taken lightly. This applies even to well-known brands, which the EUIPO has now emphasized are on the same footing as other brands. Proof of use of a trademark relies solely and exclusively on the evidence submitted to the Office.
Practically, this means trademark holders, both large and small, should systematically collect proof of use proactively. As seen in this case, an attempt to invalidate a registered trademark is a foreseeable first step when that trademark is used to oppose a third party’s trademark. The collected proof of use helps safeguard the trademark holder’s position and ensures the possibility of intervening against subsequent trademarks that may give rise to a likelihood of confusion. Having proof of use readily available beforehand means not having to rely solely on what can be gathered retrospectively in the event of a cancellation request.
The General Court's decision can be found here. It is still possible to appeal against the General Court's decision to the Court of Justice of the European Union.
The Value of a Trademark Increases with Use
To ensure your trademark registration retains its value and remains valid, it must be used correctly, and proof of use must be collected. Berggren's brand protection professionals can advise on how the mark should be used, what material should be collected of its use, and assist in gathering proof of use.
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