BIG MAC (2019) EUIPO 000014788
European Union Intellectual Property Office (EUIPO) cancels use of 'Big Mac' trademark across the EU with immediate effect, after application for revocation successfully brought by Supermac's (Holdings) Ltd against McDonald's International Property Company Ltd.
Decision of the Cancellation Division dated 11 January 2019
Cancellation of EU trademark - European Union Intellectual Property Office - EUTM No. 000062638 - Food prepared from meat products - Edible sandwiches - Services rendered or associated with operating and franchising restaurants
Summary of the parties' arguments
The applicant, Supermac's (Holdings) Ltd, argued that the EUTM was not put to genuine use during a continuous period of five years following the date of registration. The applicant therefore requested that the EUTM be revoked in its entirety from an earlier date.
By way of response, the EUTM proprietor filed evidence of use, including:
- Three affidavits signed by representatives of McDonald's companies in Germany, France and the UK showing sales of 'Big Mac' sandwiches
- Brochures, advertising posters and packaging for sandwich boxes in German French and English dated between 2011-2016
- Printouts from McDonald's websites registered in a wide range of EU Member States, as well as a printout from en.wikipedia.org
The applicant contended that the evidence of use submitted by McDonald's was insufficient to prove that the EUTM was put to use for anything other than sandwiches. The proprietor further claimed that if the Office considered the evidence provided to be insufficient to show genuine use for all of the contested goods and services, then the application for revocation has to be rejected at least insofar as it is directed against some of the goods and services, which it listed explicitly.
Grounds for the decision
According to Article 58(1)(a) EUTMR, the rights of the EUTM proprietor will be revoked on application to the Office if, within a continuous period of five years, the trademark has not been put to genuine use for the goods and services for which it is registered. Genuine use is defined as existing where the mark is used in accordance with its essential function - to guarantee the identity of the origin of the goods and services. Genuine use requires actual use on the market and does not include token use for the sole purpose of preserving the rights attached to the mark.
In the present case, the EUTM was registered on 22/12/1998. The revocation request was filed on 11/04/2017. Therefore, the relevant five year period began on 11/04/2012, and not from the point of first registration as had been suggested by the applicants. Upon examination of the evidence, the Cancellation Division found that the evidence was insufficient to establish genuine use of the trademark - noting that the majority of evidence originated from the proprietor themselves, and the internet extracts were not supported by the presence of user data such as traffic statistics.
The Office conceded that although some of the printouts provided by the proprietor did exhibit sandwiches, it could not be concluded whether, or indeed how, an order could be made through the site. With regard to the advertising brochures and packaging materials, no information was provided on how these were circulated, who they were offered to or whether they actually led to any purchases. Therefore, the evidence provided does not show sufficient details concerning extent of use. As such, the submitted brochures, packaging materials and printouts did not give sufficient detail to support the sales claims made in the affidavits.
As far as the Wikipedia entry was concerned, the Office noted that Wikipedia entries cannot be considered as a reliable source of information as their open-source nature leaves them open to amendment by anyone. Therefore, the excerpt from Wikipedia did not alter the nature of the conclusions reached.
The Cancellation Division concluded that the evidence furnished by the EUTM proprietor was insufficient to prove that the EUTM was genuinely used in the relevant territory during the relevant period of time. As a result, the application for revocation was successful and the contested EUTM has been revoked in its entirety. As per Article 62(1) EUTMR, the revocation will take effect from the date of the application, in this case 11 April 2017. The applicant's requests for an earlier date were denied by the Cancellation Division, since no legal interest was shown to justify it.
According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. The EUTM proprietor was therefore ordered to bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.
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