Following a seven year battle between McDonald’s and the Irish fast food restaurant group, Supermac’s, the General Court of the European Union has handed down a decision to partially annul an earlier decision of the EUIPO’s Board of Appeal, thereby cancelling McDonald’s European Union trade mark (EUTM) registration for its BIG MAC mark insofar as it covers “chicken sandwiches” in Classes 29 and 30, “foods prepared from poultry products” in Class 29, and “services rendered or associated with operating 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” in Class 42 on the grounds of non-use.
Following McDonald’s successfully preventing Supermac’s registration of the mark SUPERMAC’S as an EUTM for their core goods and services in Classes 29, 30 and 43 back in 2016, Supermac’s filed a cancellation action against McDonald’s own EUTM registration for the mark BIG MAC covering goods/services in Classes 29, 30 and 42, on the grounds that the mark had not been put to genuine use in the EU during the five year period immediately preceding the date of the cancellation action.
In a decision dated 11 January 2019, the EUIPO’s Cancellation Division upheld Supermac’s cancellation action, declaring McDonald’s registration to be revoked in its entirety on the grounds that McDonald’s had not proven the extent of the use of their BIG MAC mark in the EU during the relevant period.
Unsurprisingly, McDonald’s appealed this decision, and the Board of Appeal partially annulled the Cancellation Division’s decision, allowing McDonald’s BIG MAC mark to remain registered for the following goods/services:
Class 29
Foods prepared from meat and poultry products, meat sandwiches, chicken sandwiches.
Class 30
Edible sandwiches, meat sandwiches, chicken sandwiches.
Class 42
Services rendered or associated with operating 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.
Whilst conceding that McDonald’s had indeed used the BIG MAC mark in the EU in connection with “meat sandwiches” during the relevant period, Supermac’s appealed the remainder of the Board of Appeal’s decision to the General Court.
Chicken sandwiches and foods prepared from poultry products
Initially, McDonald’s sought to argue that Supermac’s appeal was inadmissible insofar as it concerned “chicken sandwiches”, on the basis that Supermac’s had not sought to appeal the earlier decision insofar as it covered “meat sandwiches”, and “meat sandwiches” clearly cover “chicken sandwiches”. However, the Court rejected this claim as being unfounded on the basis that Supermac’s written pleadings made it clear that, in their view, McDonald’s evidence was not sufficient to establish genuine use of the BIG MAC mark in connection with “chicken sandwiches”, and that the evidence showed use in relation to “a sandwich with beef”, and nothing else.
The Court then turned to examine the substance of the appeal. Having considered McDonald’s evidence of use of the BIG MAC mark for “chicken sandwiches”, the Court held that this evidence, which consisted of (a) printouts of French advertisements on which the date “September- November 2016” was handwritten, (b) screenshots of a television commercial relating to the “Grand BIG MAC chicken”, broadcast in France in 2016 and (c) screenshots from the Facebook account of McDonald’s France showing a post advertising the Grand Big Mac Chicken, dated September 2016, was insufficient to prove genuine use in the EU during the relevant period. In particular, whilst the evidence showed some use of the BIG MAC mark in connection with “chicken sandwiches” in 2016 in France, this evidence was deemed to show only “insignificant use” as it did not provide any indication as to the extent of that use, including, for example, the volume of sales, the value of those sales, the length of the period during which the mark was used or the frequency of that use. As a result, the Court held that McDonald’s registration should be revoked for non-use in relation to both “chicken sandwiches” and “foods prepared from poultry products”.
The Class 42 services
With regard to the Class 42 services covered by McDonald’s registration, initially the Court held that the Board of Appeal had erred in its interpretation of those services insofar as it had equated them with fast-food restaurant services. Moreover, the Court did not agree with the Board of Appeal’s view that McDonald’s use of the BIG MAC mark in connection with meat sandwiches was such that it established a link between the BIG MAC mark and restaurant services, or that the BIG MAC mark had become so inextricably linked with the MCDONALD’S trade mark that it too could be considered as having been used for restaurant services. Indeed, the Court held that use of a mark for goods cannot prove use in relation to services, nor can the reputation of one mark for certain goods/services, have a bearing on the scale/extent of use of another mark on the basis that the public could establish a link between those marks. Having considered McDonald’s evidence of use, all of which related to the use of the BIG MAC mark for meat sandwiches, the Court held that this evidence was not sufficient to establish genuine use of the Class 42 services, even if they were understood as being fast-food restaurant services.
Foods prepared from meat products and edible sandwiches
Supermac’s also sought to cancel McDonald’s registration insofar as it covered “foods prepared from meat products” in Class 29 and “edible sandwiches” in Class 30, on the grounds that these are broad categories of goods and use had only been established for the smaller sub-category of “meat sandwiches”. However, the Court held that the respective goods have the same intended use and purpose, and that the terms “foods prepared from meat products” and “edible sandwiches” are not sufficiently broad categories of goods for it to be necessary to identify sub-categories within them. As a result, Supermac’s appeal was refused insofar as it covered these goods.
Whilst this decision does not prevent McDonald’s from using its mark in connection with “chicken sandwiches” or the other goods/services for which its mark had previously been registered, it does mean that it no longer has a monopoly on the BIG MAC mark for such goods/services in the EU, thereby potentially enabling competitors, such as Supermac’s, to use/register marks containing the element “Mac” in relation to such goods/services. Of course, any such competitors would need to bear in mind that McDonald’s will still be in a position to prevent the use and registration of marks similar to their BIG MAC mark in connection with goods/services similar to the goods for which the mark remains registered, and/or of marks which have the potential to take advantage of, or cause detriment to, the distinctive character or reputation of McDonald’s BIG MAC mark.