Written by: Friedrich Scheele
McDonald’s hamburgers span the globe. These sandwiches, renown throughout the U.S., are also widely available in Munich, Paris, and many other European cities. One of its more famous hamburgers, available globally, is the BIG MAC®. Its ubiquity is so well-established that The Economist created a purchasing-power parity (PPP) index in 1986 known as the Big Mac Index, which used BIG MAC® prices across the globe to compare relative strengths of various currencies.
Americans call it the Big Mac. Parisians refer to it as “le Big Mac” (reliably confirmed by Pulp Fiction’s Vincent and Jules in a car ride). But the biggest international difference between the satisfying sandwiches may be intellectual property rights. BIG MAC® is a registered trademark in the U.S. At the beginning of 2019, however, McDonald’s trademark registration was revoked in the European Union. The reason, according to the European Union Intellectual Property Office (EUIPO), is that “BIG MAC” has not been used as trademark in the European Union.
How did this happen?
An application to register “BIG MAC” as a word-mark was filed in 1996 by McDonald’s in the European Union for several products and services in classes 29, 30 and 42. A registration was granted in 1998.
In 2017, a Dublin based firm, Supermac’s (Holdings) Ltd., filed a request according to Article 58 (a) of the EU Trademark Regulation (“EUTMR”) for revocation of the trademark registration, because it was allegedly not used in the European Union for the registered goods and services within a preceding continuous period of five years.
The EUIPO agreed, and McDonald’s trademark registration was revoked on January 11, 2019.
Under the EUTMR, the burden of proof of use lies with the trademark proprietor. The Office cannot, on its own, investigate genuine use of a mark and it has no role in collecting evidence itself. Even proprietors of well-known marks must submit competent evidence to prove genuine use of their marks.
Use of a trademark can be demonstrated through the sale of a marked product or advertising the mark. But genuine use of a trademark cannot be proven through inferences or suggestions. Instead, use must be demonstrated by credible and objective evidence. Evidence sufficient to prove use at the EUIPO must indicate each of the place, time, extent and nature of use of the contested trade mark for the goods and services for which it is registered.
This was McDonald’s burden regarding its use BIG MAC.
McDonald’s sought to meet its burden to demonstrate trademark use though affidavits of employees describing the volume of Big Macs sold in some EU states.
The affidavits contained statements like “According to the records available to me, the number of ‘BIG MAC’ sandwiches sold in Germany per year exceeds the following numbers: 2011 – 52.000.000 ‘Big Mac’ sandwiches.” Furthermore, photos of packages, brochures, printouts of web pages and the like where submitted.
But does the above evidence demonstrate “place, time, extent and nature of use”? The Cancellation Division did not think so; the evidence was found insufficient to establish genuine use of the trademark.
Sworn or affirmed written statements in principle are not per se ineffective in demonstrating use before the EUIPO. However, due to bias concerns, sworn statements by the interested parties themselves or their employees are generally given less weight than independent evidence.
The probative value of the affidavits depends upon the overall evidence in the particular case and particularly “whether or not they are supported by other types of evidence (labels, packaging, etc.) or evidence originating from independent sources.” The declaration provided by the proprietor in this case contained an outline of the nature of the use, and only general statements concerning the required trade activities.
According to the decision, McDonald’s mistake was that it did not support the affidavit statements with the necessary “further evidence.”
The Cancelation Division found that the presented evidence did not provide the required information on the extent of use. There was no information provided about how the submitted brochures were circulated, who they were offered to, and whether they led to any potential or actual purchases. The submitted packaging was found insufficient because there was no independent information submitted to show “how many of the products for which the packaging was used …were actually offered for sale.”
Similarly, the mere presence of a trademark on a website is, of itself, insufficient to prove genuine use unless the website also shows the place, time and extent of use – including whether “orders for the relevant goods or services have been made through the website”. The bottom line for the Cancellation Division regarding the website evidence was that “a connection between [McDonald’s] websites … and the eventual number of items offered (sold) could not be established.”
The website submission could have been strengthened by evidence that the specific website has been visited or used for purchase of goods. Useful evidence in this regard was described as records that are generally kept when operating a business web page, for example, records relating to internet traffic and hits attained at various points in time or the countries from which the web page has been accessed. Neither of these, however, was provided by the proprietor.
The “place, time and extent of use” evidence in this case could have been stronger if, for example, supplemented with copies of newspaper advertisements together with the publication invoices, perhaps described in an accompanying (and preferably, independent) affidavit. Or, McDonald’s may have had better luck focusing on online sales—which may inherently provide more details regarding the nature of the use.
While the decision may come as a surprise because of the widespread and global recognition of the BIG MAC mark, it is not surprising when viewed from the rigid perspective of Cancellation Division practices. Panels rely on credible, admissible, and delineated sources of evidence, which evidence must be presented by the parties. Where a party fails to produce such evidence, the Cancellation Division is not supposed to resort to general public knowledge to fill in the gaps.
Stay tuned as this decision will almost certainly be appealed.