The Court of the European Union has recently established, with judgment of last June 5th, that the famous American fast-food chain McDonald’s lost its rights on the “Big Mac” sign in relation to chicken-based products.
The Dispute
The issue started in 2017, when an Irish chain of take-away restaurant, Supermac’s, filed a revocation application for non-use against Big Mac EU trademark no. 000062638, registered in 1998 for products and services in classes 29, 30 and 42.
At first the European Union Intellectual Property Office (EUIPO) accepted the revocation application, considering that the use of the contested trademark had not been proven for the claimed goods and services.
In 2019, following the appeal brought by McDonald’s, the board of appeal annulled the decision in relation to a part of the goods and services. The protection of the BIG MAC sign was therefore confirmed for the following goods and services:
- class 29: “Foods prepared with meat and poultry products, meat sandwiches, chicken sandwiches”;
- class 30: “Edible sandwiches; meat sandwiches, chicken sandwiches”;
- class 42: “services rendered or associated with the operation of restaurants and other facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; take-away food preparation”.
Unsatisfied with the decision, Supermac’s decided to ask the EU Court for the annulment of the decision at issue, except for the “meat sandwiches” referred to in class 30.
The company, in fact, believed that the trademark was not object of genuine use in the European Union for goods and services referred to the above-mentioned classes with the exception of meat-based food products.
“Genuine use” refers to the use of a trademark in compliance to its essential function, which is to guarantee the identity of the entrepreneurial origin of the claimed goods and services, thus to create the commercial opportunity of the same.
The use cannot be proven by probability or presumptions, but it must be based on objective and real elements showing the genuine use in the interested market.
In order to do so, one should consider several interconnected factors such as the commercial volume of the acts of use, the duration of the period of use and the frequency of these acts.
The motivations of the EU Court
In the case under exam, the EU Court partially modified the EUIPO decision, limiting the protection conferred to McDonald’s by the trademark object of the dispute. The same stated, in fact, that McDonald’s did not show that the contested trademark had been object of genuine use with regards to “chicken sandwiches” products, “foods prepared with poultry products” and 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; take-away food preparation”.
In support of the above-mentioned arguments, the EU Court stated that the evidence provided by the American giant did not provide information on the entity of the use of the trademark, neither in relation to the sales volume nor with regards to the period and frequency with which such acts of use had been carried out and therefore the trademark was declared partially revoked.
Tania Giampieri