As you may have heard, an Irish company, Supermac’s (Holdings) Ltd filed a cancellation proceeding against McDonald’s European Trademark EUTM 62638, on the basis of non-use. A decision was handed down on January 11, 2019, which cancels (revokes) the “BIG MAC” trademark, in Cancellation No. 14 788 C.  The registration covers:

European Union trade mark registration No 62 638 ‘BIG MAC’ (word mark)

• Class 29: Foods prepared from meat, pork, fish and poultry products, meat sandwiches, fish sandwiches, pork sandwiches, chicken sandwiches, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles, desserts.
• Class 30: Edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar.
• Class 42: Services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods; the designing of such restaurants, establishments and facilities for others; construction planning and construction consulting for restaurants for others.

The Cancellation Division makes the remarkable conclusion that McDonald’s failed to submit sufficient competent evidence to proven use of the mark for the goods and services listed in the registration in Europe:

• Three affidavits, signed by representatives of McDonald’s companies in Germany, France and the United Kingdom. They claimed significant sales figures in relation to ‘Big Mac’ sandwiches for the period between 2011 and 2016 and attach examples of the packaging of the sandwich (boxes), promotional brochures and what appear to be menus, further referred to below:
• Brochures and printouts of advertising posters, in German, French and English, showing, inter alia, ‘Big Mac’ meat sandwiches; and packaging for sandwiches (boxes); the materials appear to originate from the EUTM proprietor and are dated between 2011 and 2016. The brochures and posters show a sandwich on the menu along with other products, or on its own, and the prices are also provided on some of the materials; other documents appear to be blank menus in which the price can be filled in. The EUTM appears on the submitted material in relation to sandwiches.
• Printouts from the websites www.mcdonalds.de, www.mcdonalds.at, www.mcdonalds.be, www.mcdonalds.cz, www.mcdonalds.dk, www.mcdonalds.es, www.mcdonalds.fi, www.mcdonalds.fr, www.mcdonalds.hu, www.mcdonalds.ie, www.mcdonalds.it, www.mcdonalds.nl, www.mcdonalds.pl, www.mcdonalds.ro, www.mcdonalds.se, www.mcdonalds.si, www.mcdonalds.sk, www.mcdonalds.co.uk, dated between 07/01/2014 and 03/10/2016. They depict a variety of sandwiches, inter alia ‘Big Mac’ sandwiches, some of which state that they are sandwiches made with beef meat.
• A printout from en.wikipedia.org, providing information on ‘Big Mac’ hamburger, its history, content and nutritional values in different countries.

 

Supermac’s challenged this evidence essentially arguing (as understood by McDonald’s):

1. The applicant holds that the EUTM proprietor has only submitted use evidence relating to a “sandwich including a beef patty, lettuce, cheese, pickles, onions and a special sauce”. Hence, it has not at all proven a proper use of the contested mark “BIG MAC” in relation to any other goods of classes 29 and 30 or even in relation to services of class 43.
2. In the applicant’s view, the use evidence submitted with regard to the afore-mentioned “sandwich including a beef patty, lettuce, cheese, pickles, onions and a special sauce” is also not sufficient to prove a proper use of the contested mark “BIG MAC” in relation to such product taking into consideration that

• it remains unclear whether the packaging provided as use evidence has been used publicly; and,
• some items provided as use evidence are undated and (c) the use evidence and, in particular, the affidavits only relate to Germany, France and Great Britain rather than to any further Member States of the European Union.

3. Apparently, while on one hand, the Cancellation Division states that the evidence sought is the particular use by the registrant, that the affidavits are to be discounted (even though their veracity could not credibly be challenged) because the affiants are interested parties:

 

In revocation proceedings based on the grounds of non-use, the burden of proof lies with the EUTM proprietor as the applicant cannot be expected to prove a negative fact, namely that the mark has not been used during a continuous period of five years. Therefore, it is the EUTM proprietor who must prove genuine use within the European Union, or submit proper reasons for non-use.

As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the

perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter.

Note that, as a predicate for the proceeding, the Cancellation Division cites a concession made by Supermac’s, the applicant for cancellation: “The applicant argued that the evidence of use submitted by the EUTM proprietor is

insufficient to prove that the EUTM was put to genuine use for anything other than sandwiches and it analyses the pieces of evidence individually.”  Therefore, while starting with a presumption that McDonald’s has shown use of the trademark on sandwiches in Europe, it had not shown sufficient use:

According to Article 58(1)(a) EUTMR, the rights of the proprietor of the European Union trade mark will be revoked on application to the Office, if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union for the goods or services for which it is registered, and there are no proper reasons for non-use.

McDonald’s submitted various evidence from the Internet; however, the Cancellation Division determined that the evidence did not show point of sale use, and thus failed to meet the criteria.  Likewise, packaging materials and brochures were dismissed because “there is no information provided about how these brochures were circulated, who they were offered to, and whether they have led to any potential or actual purchases. Moreover, there is no independent evidence submitted that could show how many of the products for which the packaging was used (if that is the case) were actually offered for sale or sold…. It follows that the submitted brochures, packaging and printouts do not give sufficient information to support the sales and turnover figures claimed in the affidavits.”  The Wikipedia page was dismissed as essentially undocumented hearsay.

In its conclusion, it is apparent that the decision represents a sanction against McDonalds for failing to supply its business information, and rather rely on public-facing information and affidavits  It is also possible that the decision results from McDonald’s failing to accurately perform a risk assessment to amend its registration to include only the defensible positions, and withdraw the remaining scope, and maintain its credibility.  The Cancellation Division concludes:

Taking into account the submitted evidence as a whole, it is concluded that the documents do not provide conclusive information that the products marked with the EUTM are offered for actual sale, as there is no confirmation of any commercial transactions, either online, or via brick-and-mortar operations. Even if the goods were offered for sale, there is no data about how long the products were offered on the given web page or in other ways, and there is no information of any actual sales taking place or any potential and relevant consumers being engaged, either through an offer, or through a sale. Finally, as far as the relevant services are considered, there is no single piece of evidence that refers to any of the registered services being offered under the EUTM.

It follows, that an overall assessment of the evidence does not allow the conclusion, without resorting to probabilities and presumptions, that the mark was genuinely used during the relevant period for the relevant goods or services (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 43). It is up to the EUTM proprietor to show such use in a manner which allows a reasoned conclusion to be made that the use is not merely token.

The methods and means of proving genuine use of a mark are unlimited. The finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that the EUTM proprietor chose to restrict the evidence submitted (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 46).

Considering the above, the Cancellation Division concludes that the evidence furnished by the EUTM proprietor is insufficient to prove that the EUTM was genuinely used in the relevant territory during the relevant period of time.

The take-home lesson here is that the statement of goods and services in a European Trademark application (and in the U.S., too) should be reasonably constrained to the actual goods and services offered, and sanctions may be applied if the goods and services are too broadly stated to be supported by the actual evidence.  Further, when offered the opportunity to supply evidence, too much is better than too little, and that an attorney Internet investigation cannot substitute for client internal documents.  However, there seems to be no explanation for the discrediting of affidavits, except perhaps to support their contentions, where possible, with objective, dated, authenticated evidence.

In this case, McDonald’s registered the mark “BIG MAC” for services it seemingly did not offer, and for a range of products it did not actually sell.  The evidence that showed use on a single type of sandwich in three countries, did not meet the expectations of the cancellation division as evidence of “genuine use in the Union for the goods or services for which it is registered”.  This, apparently was fatal.

We anticipate that McDonald’s will appeal, as is its right, and it is the author’s personal opinion that the decision will be reversed, or at least that the registration will be upheld for meat sandwiches. However, regardless of ultimate disposition, this is a terrible loss for McDonald’s, and raises an important caution for all trademark holders and brands to avoid overreach and to carefully assess risks and risk mitigation strategies.