BIG MAC EU Trademark Revoked for Nonuse

AuthorJanette C. Hamer
Pages24-64
Published in Landslide® magazine, Volume 12, Number 5, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2020 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
BY JANETTE C. HAMER
EU TRADEMARK REVOKED FOR NONUSE
Anthony Nuccio/American Bar Association
Published in Landslide® magazine, Volume 12, Number 5, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2020 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
including the nature of the relevant goods or services and the
characteristics of the market concerned, the territorial extent of
use, and its commercial volume, duration, and frequency.
The independent evidence led in support of the afdavits
by McDonald’s employees failed to prove the extent of use of
the BIG MAC trademark. Shortcomings in the independent
evidence were highlighted as follows by the EUIPO:
“[T]he mere presence of a trade mark on a website is,
of itself, insufcient to prove genuine use unless the
website also shows the place, time and extent of use
or unless this information is otherwise provided. [T]he
value of internet extracts . . . can be strengthened by
evidence that the specic website has been visited and,
in particular, that orders for the relevant goods and ser-
vices have been made through the website.”4
“[T]here is no information provided about how these
brochures were circulated . . . . Wikipedia entries can-
not be considered as a reliable source of information, as
they can be amended by Wikipedia’s users.”5
The decision serves as a stark reminder of the importance
of properly prepared evidence in EUIPO proceedings, not
only for lesser-known marks but also for well-known marks
that were clearly used during the relevant period. McDonald’s
has led an appeal against the decision, which is pending. It
remains to be seen whether the Board of Appeal follows the
evaluation of the evidence.
Evidence Considerations before the EUIPO
in Light of BIG MAC
As highlighted by the BIG MAC decision, the EUIPO cannot
determine ex ofcio whether a trademark is genuinely used.
The burden of proof is on the proprietor to show that the EU
trademark is genuinely used. The use must be demonstrated
by solid and objective evidence of effective and sufcient
use of the trademark on the market concerned.6 The evidence
alone must provide sufcient indication of (1) time, (2) place,
(3) extent, and (4) nature of use in order to prove genuine use.
Time
In a cancellation action, the time is determined by the request
of the party ling the action. It can be any ve-year period
after registration of the EU trademark, and in general is ve
years prior to ling the cancellation request.
Place
The evidence must show the use of the trademark in the ter-
ritory where it is protected. The use of the trademark in
non-EU territories will not be taken into account. The EUIPO
will determine on a case-by-case basis whether the geograph-
ical dimension of the use is sufcient. At the moment, the use
of an EU trademark in the U.K. or even in London and its
immediate surroundings may be geographically sufcient.7
Janette C. Hamer is a partner at Forresters IP LLP and splits
her time between their ofces in Birmingham, London, and Munich.
She specializes in trademark and design prosecution, exploitation,
enforcement, and portfolio management on a national and
international level. She can be reached at jhamer@forresters.co.uk.
I
n January 2019, the European Union Intellectual
Property Ofce (EUIPO) upheld a revocation
action1 brought by Supermac’s (Holdings) Ltd
against McDonald’s European Union trademark
for BIG MAC. Supermac’s is a fast-food chain,
operating exclusively in Ireland, which opened
its rst restaurant in 1978. The revocation action
was led in defense of McDonald’s oppositions
against Supermac’s EU trademark applications
for SUPERMAC’S for restaurant services in
class 43. The BIG MAC trademark registration
was revoked on the ground of nonuse. On the face of it, this
is staggering. In 2013, in the U.K. alone, McDonald’s sold 91
million Big Mac sandwiches.2
The decision serves to highlight that no matter how well known
and widely used a trademark, there is no room for shortcuts when
it comes to presenting evidence of use at the EUIPO. This article
looks at EUIPO evidence requirements and provides recommen-
dations on how to maintain EU trademark registrations.
The BIG MAC Case
The BIG MAC trademark registration covered a variety of
goods and services in classes 29, 30, and 43, including foods
prepared from meat, pork, meat sandwiches, preserved and
cooked fruits and vegetables, eggs, cheese, milk, biscuits,
bread, cakes, coffee, and services rendered or associated with
operating and franchising restaurants. Supermac’s claimed
that the registration had not been put to genuine use in the
ve-year period prior to the request for revocation.
In accordance with the statute, the rights of the proprietor of
an EU trademark can be revoked on application to the EUIPO
if the EU trademark has not been put to genuine use for a con-
tinuous period of ve years. The use must relate to the goods
and services for which the EU trademark is registered.
The onus was on McDonald’s to prove genuine use of the
BIG MAC trademark, namely to show (1) actual use of the mark
in relation to goods or services already or about to be marketed
in the marketplace, (2) use that is not merely token but serves to
preserve the rights conferred by the mark, (3) use consistent with
the essential function of the trademark (a guarantee of the iden-
tity of the origin of goods and services), and (4) real commercial
exploitation of the mark to maintain or create a market share.3
McDonald’s claimed genuine use of the BIG MAC trade-
mark in several EU member states. McDonald’s led three
afdavits from its representatives in Germany, France, and
the U.K. In the afdavits, the representatives claimed sales of
1.4 billion Big Mac sandwiches across Germany, France, and
the U.K. for the relevant period of time. The afdavits were
led together with examples of packaging, promotional bro-
chures, printouts of advertising posters, printouts from various
McDonald’s country websites, and a Wikipedia extract.
The EUIPO held that McDonald’s evidence was insuf-
cient to establish genuine use.
While afdavits and other written statements drawn up by the
interested parties, or their employees, are admissible as evidence,
their value depends on the assessment of any independent evi-
dence provided in support of those statements. Such assessment
requires a consideration of all relevant facts and circumstances,
Published in Landslide® magazine, Volume 12, Number 5, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2020 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
However, the use of an EU trademark in the U.K. after Brexit
and the expiry of the transitional period (on December 31,
2020) will not count toward the use of an EU trademark.
If the earlier mark is a national trademark registered in one
of the EU member states, use in that member state is suf-
cient provided that it is genuine use.
Extent of Use
The EUIPO will consider whether the owner has seriously tried
to acquire a commercial position in the relevant market. Accord-
ing to the EUIPO Guidelines relating to proof of use, account
will be taken of the commercial volume of all the acts of use and
the duration of the period in which those acts of use occurred as
well as their frequency.8 Thereafter, the EUIPO will make a deci-
sion on a case-by-case basis. The EUIPO Guidelines provide
examples of sufcient9 and insufcient10 use.
Nature of Use
The nature of use concerns the use of the trademark in accor-
dance with its essential function, namely identifying the
origin of the goods and services. The trademark must be used
in public and not only internally. Use must be shown in rela-
tion to the goods and services for which it is registered. The
evidence can include use in advertising and on the internet.
The EUIPO Guidelines relating to proof of use state that
advertising carried out either in parallel to the marketing of
goods and services or in advance of the actual marketing of
goods and services if done to establish a market will consti-
tute genuine use.11
According to the EUIPO Guidelines, the value in terms of
evidence of internet extracts can be strengthened by submit-
ting evidence that the specic website has been visited. It is
particularly important that orders for the relevant goods and
services have been made through the website by a certain
number of customers in the relevant period. For instance, use-
ful evidence in this regard could be records that are generally
kept when operating a business web page, such as records
relating to the hits attained at various points in time or, in
some cases, the countries from which the web page has been
accessed. The date of use on the internet will be considered
reliable where the website time-stamps each entry, index-
ing dates are given to the web page by search engines, or a
screenshot of the website bears a given date.12
Further Examples of How Evidence Should Be
Presented
Evidence may consist of supporting documents and items
such as packages, labels, price lists, catalogues, invoices,
photographs, newspaper advertisements, and sworn or
afrmed statements.
If written statements are supported by brochures, articles,
or other marketing materials, it is important to include circu-
lation gures, the relevant date or period of time, where the
marketing materials have been distributed, and to whom.
Overly Broad Specications
Given the breadth of the specication for the BIG MAC
trademark registration, the decision also comes with a
reminder not to apply for or register trademarks with an
overly broad specication. Supermac’s argued that McDon-
ald’s had not used the BIG MAC trademark in relation to all
the goods and services covered by the registration.
In January 2020, the Court of Justice of the European Union
(CJEU) handed down a decision in Sky v. SkyKick,13 which deals
with overly broad specications, issues of unclear or imprecise ter-
minology, and bad faith arguments when an applicant applies for
goods and services without commercial logic. The decision fol-
lowed a 2019 opinion by the Advocate General (AG),14 which
held that while an EU trademark cannot be declared wholly or
partially invalid on the sole ground that some or all of the terms
in the specication of goods and services lack sufcient clarity
and precision, those ndings can be taken into account under the
ground for refusal or invalidity that the registration is contrary to
public policy.15 The AG stated that “registration of a trade mark for
‘computer software’ is unjustied and contrary to the public inter-
est because it confers on the proprietor a monopoly of immense
breadth which cannot be justied by any legitimate commercial
interest of the proprietor.16 It is noted that this practice is already
recognized by the U.S. Patent and Trademark Ofce. The AG was
also of the opinion that an application without any intention to
use it in connection with the covered goods and services may, in
specic circumstances, constitute bad faith. Finally, the AG also
conrmed that the mark should only be declared invalid for the
goods and services for which the ground applies.17
The CJEU did not follow the opinion of the AG fully and
held that the inclusion of broad terms such as “computer soft-
ware” is not contrary to public policy. However, the lack of
intention to use the mark could amount to bad faith where
there is no rationale for the application.18
Takeaways
The approach adopted by the EUIPO in the assessment
of evidence of trademark use does not vary between
lesser-known and well-known trademarks. No mat-
ter how well known or extensively used a trademark is,
the evidence alone must be sufcient to convince the
EUIPO that there has been genuine use.
Independent third-party evidence in the form of witness
statements by professional associations, chambers of
commerce, suppliers, customers, or business partners is
given more weight.
If third-party evidence is not available and internal
statements are to be relied upon, they must be sup-
ported by sufcient persuasive evidence, such as
invoices, orders, and shipping data.
Copies of brochures and marketing materials must be
provided with references to the publication date, print
numbers, circulation gures, and means of circulation.
Website extracts on their own are not considered reliable
evidence but would be given more weight if time-
stamped and accompanied by statistics about website
trafc listing hits and clicks from EU member states.
It would be helpful to provide clear guidelines to cli-
ents of what is required, but also remind them always to
question the source and reliability of the materials. n
Continued on page 64

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