How McDonald’s lost its BIG MAC trademark in Europe and what we can learn from it
The lesson here is simple: no matter how well-known your brand is or how reputable your law firm is, basic rules broken lead to catastrophic losses*.
Trademark juggernaut McDonald’s lost registration of one of its most famous trademarks in the European Union because the EU Intellectual Property Office found that it did not properly use its trademark. How can this be, given that European consumers know exactly what a Big Mac is (even if they don’t eat it)?
In the January 11, 2019 decision of the Cancellation Division of the EUIPO, the EUTM registration for BIG MAC was revoked because McDonalds did not demonstrate “genuine use” of the mark with sufficient evidence. The “genuine use” requirement is the EUTM system’s use requirement, which is triggered on the 5th anniversary of the registration of the EUTM. After that date, all registered EUTM’s are subject to cancellation if the owner cannot prove genuine use was made of the mark during the 5 year period just prior to the cancellation proceeding being filed.
The evidence filed in defending against the cancellation action were:
3 affidavits signed by McDonald’s representatives claiming sales figures for Big Macs
Printouts of advertising posters showing the Big Mac for sale alongside other sandwiches and Big Mac packaging
Printouts from 18, EU country-specific McDonalds websites depicting sandwiches including the Big Mac
Printout of the Big Mac wikipedia page
The EU examiners were not convinced with this evidence alone. Regarding the affidavits, the EUIPO reminded us that “statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence”. Regarding the website evidence, the EUIPO held that “mere presence of a trade mark on a website is, of itself, insufficient to prove genuine use unless the website also shows the place, time and extent of use”. Wikipedia evidence is generally not accepted as reliable on its own, as the EUIPO finds that information “can be amended by Wikipedia’s users”.
The decision also gave some guidance, most of which can be found in the Cancellation Guidelines published by the EUIPO: the value of the website printouts could have been supplemented with records that “are generally kept when operating a business webpage” such as web traffic data; information about how marketing materials were distributed, to whom, at what volume, and to what effect it had on sales;
The big lesson here is to keep separate your personal familiarity of a product from the cold, hard evidentiary rules necessary to prove what you’re familiar with. McDonald’s (through their reputable law firm which even has a former EUIPO vice president in their partner ranks) could have avoided failure by simply going through, line by line, the EUIPO’s Cancellation Guidelines on the types of evidence necessary to prove genuine use. It’s all there for everyone to see.
Under US law, the second and third items may be sufficient on its own to show during the trademark prosecution process. However, this evidence, even in conjunction with the first and fourth items, was insufficient because they failed to give context to the use. In essence, a nefarious trademark troll could essentially create several printouts and claim massive sales without strict evidentiary requirements. EU law essentially requires EUTM owners to provide hard evidence of where the use evidence was displayed, when the evidence was used, and how much exposure did the evidence have with consumers. The level of evidence required is somewhat related to the amount and type of evidence required to demonstrate common law rights in the US.
Naysayers have found this decision harsh, to whom this question is directed: if McDonalds were allowed to pass off their evidence as sufficient proof of use, what does that say about any nefarious EUTM holder who wants to fake evidence of use to harm real competition? Anyone can create webpage screenshots, construct a few signs of sales, provide a few mockup brochures, and sign some affidavits. This evidence alone, without numbers and broader context, would be very difficult to refute by the opposing party.
We expect McDonald’s to appeal at the Boards of Appeal at the EUIPO and speculate arguments to be made regarding Article 58(1)(a) EUTMR (EUTM proprietor’s burden of proof). If that doesn’t work, McDonald’s would still have two further rounds of appeals available to it, at the General Court and the EU Court of Justice.
*Okay we may have exaggerated here a bit. McDonald's can still use the BIG MAC trademark in the EU. Losing the registration of the EUTM will severely degrade their ability to enforce their rights against others which, depending on who you ask, is a needed minimization of a trademark bully's arsenal.