McDonalds fails to provide sufficient proof of genuine use of their BIG MAC trademark!

 

With its decision of 11 January 2019 the EUIPO cancellation division upheld the revocation request against all goods and services (classes 29, 30, and 42) protected under EUTM n° 62638 BIG MAC owned by McDonald’s International.

 

The decision was based upon McDonald’s failure to provide sufficient proof of genuine use in the EU market in the five years preceding the revocation application filing (thus from April 11, 2012-April 10, 2017).

 

The cancellation division held that the evidence is insufficient to establish genuine use as the material provided does not demonstrate extent of use of its mark other than possibly for sandwiches. While there is no fixed amount of sales or  figures necessary to prove use it is generally held that the threshold for genuine use is higher for such common consumer items as food and restaurant services than it is for higher priced or specialty items. In this case McDonald’s provided:

 

- 3 affidavits (one from each the UK, France, and Germany) with attachments of packaging, promotional brochures, and menus)

- Brochures and printouts of advertising poster showing BIG MAC meat sandwiches and packaging for sandwiches.

- Printouts from various McDonalds European websites

-A Wikipedia printout

 

 

Our advice to trademark owners:

 

All proof of use evidence should answer the following questions: When? Where? What? How (many/much)?

- When is the mark used? Where is the mark being used? For which goods/services is the mark used?  How many or  how much of this mark is being sold? Or how is this information (in case of advertising/brochures) being disseminated.

 

Keep detailed information regarding the extent of your marks use, gather and organize it on a regular basis (at least yearly) and keep it on file. Relevant information can be:

 

-Sales figures derived from mark: volume of sales either in monetary figures or units sold, where and when sold and evidence to support this and this separated where possible per mark, per year, per territory.

 

- Invoices and Bills of Lading should clearly indicate the Mark or, if in a sales code these invoices should be supported with brochures/catalogs with a cross reference to that sale code. Further they must also indicate date, where sale occurred (or where being shipped to), and indication of sale in local currency is also advised.

 

- Extracts of websites are helpful but should be further supported with information such as records relating to internet traffic, hits attained at various points of time, and countries from which the web page has been accessed. Also include web extracts indicating how a sale is/can be made.

 

- For brochures and catalogues, include information as to how these are circulated, volume circulated. These should be clearly dated, indicated applicable geographic region.

 

-For advertisements include advertisement budgeting figures, information as to when/where/how advertisements are circulated. For example in case of a television or radio advertising campaigns provide a listing of networks advertised upon, during which dates and time slots. For internet campaigns indicate similar information. Print advertisements should be dated with territory indicated. This can come in the form of a copy of the cover of the magazine or paper the advertisement appeared in.

 

- Wikipedia entries are not ignored but are not considered to be reliable in and of themselves as Wikipedia is modified by its users. These must be backed up with other independent source evidence.

 

-Independent marketing surveys showing brand and mark awareness can be the gold standard in evidence, if done well.

 

Finally, it should be noted that while genuine use evidence does not need to be provided for all EU Member States, a ‘significant’ part of the relevant market must be covered.

In McDonald’s case, they have filed an appeal, so this story will be continued….

 

Jennifer M. KEPLER

Bram DEJAN