McLoss - McDonald's Big Mac Trademark Revoked by EUIPO

It is not often when the 'little guy' wins in a court of law, particularly when coming up against more established and well-known brands and companies. This is even more monumental when the brand in question is near ubiquitous with an industry, namely McDonald's. Although the case has been very widely reported on in the IP community and the wider press, some nuance has been lost in the discourse on the case and what it ultimately means.

The case of Supermac's (Holdings) Ltd v McDonald's International Property Company Ltd concerned the trademark for the iconic Big Mac, which McDonald's had registered as an EU trademark in 1998 (EUTM 62638). Supermac's is an Irish fast food chain, which has been operating in Ireland since the late 1970s. After a prolonged legal fight due to the chain's name against McDonald's (unrelated to the revocation proceedings), Supermac's sought the revocation of the Big Mac trademark at the EUIPO Cancellation Division.

Supermac's argued at the EUIPO that the Big Mac trademark was not put to genuine use within the EU under Article 58 of the EU Trademark Regulation, which stipulates that "...if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union in connection with the goods or services in respect of which it is registered" an EU trademark should be revoked.

What is key is that the Big Mac trademark was registered for a number of goods and services in classes 29 and 30 (covering food items), but also under class 42 for the provision of restaurant services.

The Cancellation Division first set out that genuine use requires "...actual use on the market of the registered goods and services and does not include token use for the sole purpose of preserving the rights conferred by the mark, nor use which is solely internal". Genuine use is assessed looking at all of the relevant facts and circumstances in establishing whether the commercial exploitation is real; however, this does not include commercial success or its scale.

Having reviewed an extensive amount of evidence filed by McDonald's, including affidavits, marketing and internet materials, the panel considered whether they demonstrated genuine use of the Big Mac trademark. Although a great deal of evidence was filed, the panel considered that it didn't prove the extent of the use of the trademark itself. this includes looking at "...the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency".

With regards to internet materials, McDonald's failed to submit evidence on the actual data relating to visitors, their locations and the time frame in which this was done. Similarly, the Cancellation Division considered that, although sandwiches using the trademark were demonstrated in the excerpts from the proprietor's website, it was not possible to order the items online (or information on total orders placed and their details if possible). Finally, while brochures were provided as evidence, details on their circulation were not provided to the panel. Clearly McDonald's failed to submit detailed evidence on the use of its trademark, even though common sense demonstrates that the trademark is used within the EU.

The Cancellation Division concluded that "...the evidence analysed above does not provide sufficient details concerning the extent of use; other than exhibiting the sign in relation to goods which could be considered to be part of the relevant goods, these materials do not give any data for the real commercial presence of the EUTM for any of the relevant goods or services".

The proprietor therefore failed to demonstrate that the products marked with the trademark are offered for actual sale, as there is no confirmation of any commercial transactions, either online, or via brick-and-mortar operations. The trademark was deemed to not have been genuinely used within the EU, and the panel revoked the mark.

Clearly the case is an instance of poor evidence selection and provision, and undoubtedly will be appealed by McDonald's to the EU Boards of Appeal. It only goes to show that even the biggest and most resourceful entities can fall foul of a lack of preparation and consideration of evidence. To McDonald's chagrin, their competitors are already taking advantage of the opportunity.

Names and IP Law - Do You Have a Right to Use Your Name?

Your name is a part of who you are, your own identity, and for a lot of people, a very important indicator of their history and origin. As such, a name carries immense weight and importance to some, even if it is 'generic' such as Smith or Johnson. Often it is simply easy, and identifiable, to start trading under your own name when you start a business, e.g. Ihalainen LLP (I'm a dreamer, what can I say), but should your name conflict with a well-known brand, such as McDonald's, the use of your own name can be tricky. This begs the question: can you use your own name when doing business, or should you refrain from it outright, especially if a more well-known brand uses that very same name in its business?

In the UK a person can use their own name in conjunction with their business under the Trade Marks Act 1994, through the implementation of EU Directive 2008/95/EC, so far as the use "...is in accordance with honest practices in industrial or commercial matters". On the face of it this entails the use of your name, such as Ihalainen LLP, even if there is an existing Ihalainen Ltd with registered trademarks over the name. The name, however, does have to be distinctive in its use as a trademark, irrespective of its unique characteristics (i.e. Ihalainen clearly is more unique in an Anglo setting vis-a-vis a Finnish setting). Surprisingly, at least from a prima facie assessment, the provision applies equally to corporate names, not just natural persons' names.

People, and businesses, can be hurt by mistaken names

One still has to remember that the defense only applies to a bona fide use of one's name in their business, and adopting a name that clearly infringes a well-established and famous mark will not be overlooked only because the person has the very same name. As was stated by Lord Justice Gibson in Asprey & Garrard Ltd v WRA (Guns) Ltd: "...the defence has never been held to apply to names of new companies as otherwise a route to piracy would be obvious". Clearly one can appreciate that the position of the Court of Appeal in the case is correct; however should an individual trade under their own name, at the same time or prior, as one that is well-known, the defense clearly applies, as they have not sought to use the name to illegitimately gain from its notoriety. Even if the use of the name is honest from a subjective point of view, the use might still not fall under the defense, as was elaborated by Lord Justice Gibson further in the case: "I would add that however honest his subjective intentions may be, any use of his own name which amounts to passing off cannot be in accordance with honest practice in industrial or commercial matters".

A similar provision exists in the United States under 15 USC section 1115, through which a defense is given if the "...use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin". This affords someone protection over the use of their own name in business, although with a similar caveat as to its proper and bona fide use. This view is generally accepted within the common law, with similar provisions existing under the Australian Trade Marks Act 1995 and the Canadian Trade-Marks Act.

The defense described above does not detract from the contestable requirements of registering a trademark, and as said above, a name still has to fulfill all requirements for a valid trademark. Should the name used not be distinctive enough it clearly will not merit protection, and potentially will not be registrable from the outset.

Source: JDSupra