Trade marks: McDonald’s v Supermac’s
McDonald’s has lost rights to the trade mark “Big Mac” in January in a somewhat David v Goliath legal battle.
In a decision by the EU Intellectual Property Office (“EUIPO”), an Irish fast food chain, Supermac’s, successfully persuaded the EUIPO to cancel the Big Mac trade mark – a trade mark registered back in 1996. Supermac’s submitted that there was no genuine use of the trade mark for a continuous period of five years.
McDonald’s provided evidence to contest the claim including affidavits, specimens of packaging, promotional brochures, printouts, and even a Wikipedia article. However, the EUIPO ruled this was insufficient and McDonald’s could not prove the genuine use of the trade mark for a continuous period of five years. There was no conclusive evidence that sales had taken place nor evidence showing that consumers had been engaged. On this basis, the EUIPO ruled in favour of Supermac’s and ordered the cancellation of the “Big Mac” trade mark.
As the “Big Mac” sandwich is such a well-known menu choice, the decision appears surprising at face value. However, the decision makes its clear that all evidence submitted to the EUIPO must be in sufficient detail. Promotional material must provide information on the actual or expected reach of such material submitted. Any printouts from websites must be supported by information on internet traffic. Evidence of sales numbers for registered products/services is beneficial to demonstrate genuine use. It is recommended that independent third party evidence be submitted in addition to evidence originating from the trade mark owner themselves.
Rival fast food chain, Burger King, has jumped at the chance to poke fun at McDonald’s by amending menus in their Swedish operation to include burgers such as “Burger Big Mac Wished It Was” and “Anything But A Big Mac”.
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