Supermac’s trademark victory over McDonald’s is a “timely reminder” on evidence use

In what is being described as a “landmark judgment”, Irish fast food chain Supermac’s has prevailed in a cancellation action against the McDonald’s registration of the BIG MAC trademark.

The EUIPO judgment was published on 11 January 2019. Supermac’s was seeking to revoke the BIG MAC registration by claiming that it was “not put to genuine use during a continuous period of five years following the date of registration in relation to any of the registered goods and services”. In response, McDonald’s filed evidence of use consisting of:

  • three affidavits (from representatives of McDonald’s companies in Germany, France and the United Kingdom);
  • marketing brochures and printouts of adverts featuring a Big Mac sandwich;
  • printouts from 18 international McDonald’s websites; and
  • a printout of the Big Mac Wikipedia page.

In response, Supermac’s argued that the evidence was “insufficient to prove that the EU trademark was put to genuine use for anything other than sandwiches”.

In its decision, the EUIPO sided with Supermac’s, with the Cancellation Division stating that it found the evidence “insufficient to establish genuine use of the trademark”. The EUIPO was critical about many elements of the evidence that McDonald’s had presented. On the three affidavits used in evidence, it stated that “statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence”. On the website printouts, it mentioned numerous issues, including the fact that “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”. It also noted that no information was given about internet traffic to any of the webpages and that there were no details about the ability to buy a Big Mac. The brochure evidence was similarly criticised because “no information [was] provided about how these brochures were circulated, who they were offered to, and whether they have led to any potential or actual purchases”. The use of Wikipedia was wholly dismissed

McDonald’s is set to appeal, but Carissa Kendall-Windless – a senior associate at IP law firm EIP – characterised the decision as a “significant one”, expanding: “It acts as a timely reminder that in these ‘David versus Goliath’ cases, the smaller company may be legally advised, stubborn and keen to clear its own brand pathway, and thus does not always roll over and concede to the demands and objections of the larger multinational.”

In terms of lessons, Kendall-Windless adds that “trademark owners should set up and maintain an audit trail of their use of the trademark from the date they file it”. A bolstering of such evidence will presumably be used by McDonald’s in the future, with Kendall-Windless noting that “there is no guarantee that the next judgment will render the same result as the first”.

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