EU trademark "BIG MAC" deleted

McDonald's was unexpectedly defeated in a cancellation proceeding at the European Union Intellectual Property Office (EUIPO) concerning the word mark "BIG MAC". After McDonald's was able to prevent the expansion of its Irish competitor Supermac by referring to conflicting European trademark rights, Supermac counterattacked and applied for the cancellation of the union trademark "BIG MAC" due to lack of use. Pursuant to Art. 58 para. 1 lit. a EUTMR, trade mark protection ceases on application if the EU trade mark has not been put to genuine use in the European Union within an uninterrupted period of five years for the goods or services for which it was registered.

In order to prove genuine use McDonald's submitted three affidavits by representatives of the group from Germany, France and Great Britain, brochures and advertising posters in various languages, screenshots of various country-related websites of the group from the years 2014 to 2016 and a wikipedia article concerning the Big Mac, which is the most popular product of the group. On January 11th, 2019 the competent cancellation division of the EUIPO decided that the documents submitted were not sufficient to prove genuine use. It states that concrete information on all relevant circumstances relating to the scope of use is required. In addition to the type of goods and services for which the trademark is used, this also includes the frequency and duration of use, its geographical scope as well as information on the affected market and the volume of trade. Ultimately, an overall view of all these aspects is decisive for the question of whether genuine use exists.

The provided brochures and advertising materials are considered inadequate because they do not indicate whether and when they were distributed, to whom they were handed over or sent and whether they were ultimately relevant for the acquisition of the products. Regarding the screenshots of the websites, it is not sufficient that they display the trade mark at issue; it is also necessary to provide information on the availability of the websites in terms of time and space. In addition, it must be proved by the submission of concrete figures that the website was actually visited, and that goods or services were obtained from the website in the relevant spatial and temporal context. As regards the affidavits the cancellation division points out that, since they originate from representatives of one of the parties, they have in principle a lower evidential value than statements made by an uninvolved person or entity. Understandably, the EUIPO states that wikipedia entries also have a lower evidential value as the content can be changed anonymously at any time.

This decision underlines that the obstacles for the proof of genuine trademark use according to Art. 58 para. 1 lit. a EUTMR are quite high. The trademark owner cannot limit himself to the submission of affidavits and advertising material but must provide concrete information on the actual scope of use.