Big Mac’s Big Mess
In a landmark decision, on January 11, 2019, the European Union Intellectual Property Office (EUIPO) revoked the “Big Mac” trademark owned by the popular McDonald’s Corporation.[1] This was a surprising outcome for the legal battle between worldwide giant McDonald’s and Ireland based fast-food chain Supermac’s, which was looking to expand into U.K. and Europe.
In 2014, Supermac’s trademark application was opposed by McDonald’s, which claimed that consumers would be confused, as both chains sold similar foods. The EUIPO at the time found that because both the marks in question were preceded by the similar qualifiers, “Super” and “Big,” that there would be a likelihood of confusion.[2] This led to claims by Supermac’s that the trademark “Big Mac” has not been in “genuine use”[3] within the European Union for a continuous period of five years after it was filed.[4]
The EUIPO held that while Supermac’s was the party asserting the claim, the burden of proof to prove genuine use rested upon McDonald’s. The decision said that the applicant could not be expected to prove a negative fact, or, the lack of genuine use, and the liability was on the trademark proprietor to prove that they had put the trademark to genuine use.[5] Genuine use requires actual use of the goods and services on the market and not merely token use for the purpose of preserving the rights conferred.[6]
McDonald’s submitted as proof of genuine use affidavits from its representatives within the Union that establish figures of Big Mac sales, brochures from its advertising of Big Mac, and printouts from websites from its branches in various member states which offer the Big Mac. The EUIPO held that there was not enough probative value of these submissions, as they were not supported by other types of evidence such as labels, packaging, or any evidence originating from independent sources. The decision also mentioned that the methods and means to prove genuine use of a mark are unlimited and there is no extraordinarily high standard of proof, but that McDonald’s failed by choosing to restrict the evidence it submitted.[7]
This case has been portrayed as a classic David vs. Goliath scenario by the European media. It has been welcomed by many as a win for smaller establishments against large corporations who tend to become “trademark bullies.” It does, of course, leave the famous “Big Mac” mark unprotected and open to disparagement and trolling by competitors.[8]
Footnotes
