What is genuine use? Supermac\u2019s (Holdings) Ltd v McDonald\u2019s International Property Company, Ltd.<\/p>\n
Much has been made of this dispute, both in legal reports and the media at large.\u00a0 In case you missed it, a request for revocation was filed by a small Irish fast food chain, Supermac\u2019s (Holdings) Ltd, against McDonald\u2019s EU trade mark registration no. 62638 for the mark BIG MAC. They filed their request for revocation on the grounds that the mark BIG MAC had not been put to genuine use in the EU, despite admitting that they knew it had been.<\/p>\n
The registration covered a number of goods and services, including \u2018meat sandwiches\u2019. It should have been easy for McDonald\u2019s to file evidence of use and maintain their registration at least in respect of the core \u2018meat sandwiches\u2019; even those of us who have not sampled this particular delicacy are aware of the use of the name by McDonald\u2019s.<\/p>\n
The Cancellation Division at the EUIPO held that the registration should be revoked in its entirety, because McDonald\u2019s failed to provide sufficient evidence of use. Even Supermac\u2019s admission that McDonald\u2019s had used the mark in relation to sandwiches had no bearing on the case.<\/p>\n
The EUIPO\u2019s guidelines on evidence of use and what is required to defend a cancellation action is very clear:<\/p>\n
The role of the Office is to assess the evidence put before it in the light of the parties\u2019 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.<\/em><\/p>\n Despite this clarity, it appeared that McDonald\u2019s did not take the warning seriously. Their evidence comprised of:<\/p>\n 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.<\/p>\n It was also not made clear where the brochures and posters were distributed and whether they led to any actual purchases.\u00a0 Because the evidence did not adequately support the claims made in the affidavits, the EUIPO gave little weight to this evidence.<\/p>\n As expected, McDonald\u2019s appealed the Cancellation Division\u2019s decision to the EUIPO\u2019s 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.\u00a0 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\u2019s now have their chance to file arguments in reply.<\/p>\n 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\u2019s 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\u2019s decision, at least in respect of meat sandwiches.<\/p>\n Regardless of this appeal, McDonald\u2019s 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.<\/p>\n This decision is a stark reminder to brand owners that use of a mark is not enough; owners need to be prepared to submit\u00a0evidence of genuine use\u00a0to maintain their rights. McDonald\u2019s will likely regret taking what appears to be an all too blas\u00e9 approach in these proceedings, which has resulted in a significant media storm. Even if you are lucky enough to be considered \u2018well known\u2019, you need to prove use just like everyone else.<\/p>\n 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.<\/p>\n What is genuine use? Supermac\u2019s (Holdings) Ltd v McDonald\u2019s International Property Company, Ltd. The background Much has been made of this dispute, both in legal reports and the media at …<\/p>\n","protected":false},"author":315,"featured_media":9004111222088808,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"footnotes":""},"categories":[498,497],"tags":[],"class_list":["post-8901","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-articles","category-knowledge-hub","sector-retail"],"acf":[],"yoast_head":"\n\n
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Where are we now?<\/h5>\n
Lessons to be learnt<\/h5>\n