The registration covered a number of goods and services, including ‘meat sandwiches’. It should have been easy for McDonald’s to file evidence of use and maintain their registration at least in respect of the core ‘meat sandwiches’; even those of us who have not sampled this particular delicacy are aware of the use of the name by McDonald’s.
Why did the case cause such a stir?
The Cancellation Division at the EUIPO held that the registration should be revoked in its entirety, because McDonald’s failed to provide sufficient evidence of use. Even Supermac’s admission that McDonald’s had used the mark in relation to sandwiches had no bearing on the case.
The EUIPO’s guidelines on evidence of use and what is required to defend a cancellation action is very clear:
The role of the Office is to assess the evidence put before it in the light of the parties’ submissions. The Office cannot determine ex officio genuine use of earlier marks. It has no role in collecting evidence itself. Even proprietors of purportedly well-known marks must submit evidence to prove genuine use of their marks.
Despite this clarity, it appeared that McDonald’s did not take the warning seriously. Their evidence comprised of:
- three affidavits signed by company representatives based in Germany, France and the UK;
- brochures showing Big Mac sandwiches;
- printouts of advertising posters and menus - some with prices and some without;
- printouts from its own websites showing Big Mac sandwiches; and
- a printout from Wikipedia providing information on the Big Mac hamburger, its history and nutritional values in various countries.
Much of the evidence was undated and did not show any real commercial presence; for instance, the brochures, packaging and website screenshots did not show how the goods could be purchased, and there was no evidence of actual sales or turnover figures under the mark. No information was provided regarding the website traffic, or the countries from which the websites were accessed.
It was also not made clear where the brochures and posters were distributed and whether they led to any actual purchases. Because the evidence did not adequately support the claims made in the affidavits, the EUIPO gave little weight to this evidence.
Where are we now?
As expected, McDonald’s appealed the Cancellation Division’s decision to the EUIPO’s Board of Appeal. They have recently filed their statement of grounds and a number of other supporting documents, however their representatives have requested that these be kept confidential so are not accessible to the public. Given the amount of interest that this case attracted, no doubt they wish to keep further commentary to a minimum until the case is finally resolved. Supermac’s now have their chance to file arguments in reply.
The Board of Appeal does have discretion to allow parties to submit further evidence into the proceedings, which was omitted during earlier rounds of proceedings. No doubt McDonald’s has now taken notice of their requirements and submitted more convincing evidence of genuine use. Given the furore over the previous decision, it is expected that the Board will admit the additional evidence and overturn the Cancellation Division’s decision, at least in respect of meat sandwiches.
Regardless of this appeal, McDonald’s does have another registration for BIG MAC covering much the same goods and services. The appeal is therefore not about saving their right, but about saving face. In this day and age of viral news, everyone has been a witness to their legal mistakes.
Lessons to be learnt
This decision is a stark reminder to brand owners that use of a mark is not enough; owners need to be prepared to submit evidence of genuine use to maintain their rights. McDonald’s will likely regret taking what appears to be an all too blasé approach in these proceedings, which has resulted in a significant media storm. Even if you are lucky enough to be considered ‘well known’, you need to prove use just like everyone else.
Evidence should show the time, place, extent and nature of the use. Ensure copies of brochures, advertising materials and other documents are kept on file, labelled with information such as distribution numbers and territories, and dated. Marketing materials should always be supported by evidence to show actual sales made as a result, such as invoices or receipts. Genuine use must be more than token use just to maintain a registration.
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We have had a great response to our seventh annual IP in Retail Conference so far. In IP in Retail 2019 we consider the IP dimension of current trends and issues in the sector. This full-day event looks set to be lively and engaging.