In Supermac’s v McDonald’s (14787-C), McDonald’s EU trade mark ‘Mc’ (No. EU10392835) was partially revoked following an application made by Irish fast food chain Supermac’s.
Supermac’s argued that the famous prefix mark had not been put to genuine use in relation to the goods and services covered by the registration for a continuous period of five years following registration. The decision serves as a reminder that however strong an element of branding is, the owner must be able to demonstrate and provide evidence of genuine use.
Background
Under Article 58(1)(a) of EU Regulation 2017/1001, the rights of an EU trade mark owner may be revoked on application to the EUIPO if the trade mark has not been put to genuine use in the European Union for a continuous period of five years in connection with the goods or services for which it is registered, and there is no proper reason for non-use.
If a third party applies for revocation, the EU trade mark owner must prove that it has genuinely used the trade mark or that there is a proper reason for non-use. In setting out the grounds for its decision in the present case, the Cancellation Division cited both the C-40/01 Minimax and the T-203/02 Vitafruit decisions to support the conclusion that genuine use requires actual use on the market. This must be more than ‘token’ but by no means requires large-scale commercial use or success.
The decision also referred to Rules 22(3) and 40(5) of EU Regulation 2868/95 (in the version in force at the time of the filing of the revocation application) and the need for the evidence of genuine use to establish certain cumulative factors – namely, the place, time, extent and nature of use of the contested mark.
Facts
On 15 March 2012, McDonald’s registered the word mark ‘Mc’ in relation to a variety of food stuffs in Classes 29, 30 and 32 and restaurant services in Class 43. On 11 April 2017 Supermac’s filed a request for revocation of McDonald’s EU trade mark invoking Article 58(1)(a) of the EU Regulation. This is not the first time that Supermac’s and McDonald’s have gone head to head in registry proceedings. In a previous decision issued by the Cancellation Division on 11 January 2019 (which made headline news), an application for the revocation of the McDonald’s word mark ‘BIG MAC’ by Supermac’s was upheld in its entirety as McDonald’s failed to prove genuine use to the Cancellation Division’s satisfaction.
Decision
In reaching its decision, the Cancellation Division considered wide-ranging written evidence from McDonald’s, including affidavits from various legal counsel setting out information such as:
- net turnover
- advertising expenditure and sales figures
- extracts from its websites across the European Union
- the McDonald’s Corporation Annual Reports, and
- public surveys.
It used this evidence to assess whether the Regulation 2868/95 factors had been fulfilled.
The Cancellation Division held that the evidence demonstrated genuine use in the relevant period (between 11 April 2012 and 10 April 2017) and in the relevant territory (the European Union) for some of the goods covered by the McDonald’s trade mark (namely, chicken nuggets in Class 29 and edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches and chicken sandwiches in Class 30). However, it held that McDonald’s had failed to provide any evidence or sufficient evidence to support the extent or nature of the use that was required to establish genuine use for the goods.
In particular, the Cancellation Division was persuaded by Supermac’s argument regarding the ‘nature of use’ factor – namely, that McDonald’s had failed to provide sufficient evidence to support genuine use of Mc as a standalone mark. Instead, the evidence showed that the mark was commonly used as a prefix (“it is not a ‘Mc’ Rib sandwich; it is a ‘McRib’ sandwich”).
The Cancellation Division was also sceptical of McDonald’s reliance on T-518/13 MACCOFFEE to forward its argument for a family of marks. The evidence put forward by McDonald’s was not sufficient to show that the addition of other terms (e.g. ‘rib’ and ‘coffee’) did not alter the distinctive character of the ‘Mc’ mark such that it could be said to have been put to genuine use. Therefore, McDonald’s had not sufficiently shown that the use of ‘Mc’ as a prefix did not alter the distinctive character of the mark. The decision resulted in the partial revocation of the mark.
Conclusion
This decision (alongside the previous BIG MAC decision) is a stark reminder for owners to maintain full records of trade mark use in case of a revocation application from competitors for non-use – no matter how well known the brand is.
If you would like to discuss any of the issues raised in this article or would like further information, please contact Jeremy Dickerson, Emily Roberts or your usual contact in our intellectual property team.
This article first appeared on WTR Daily, part of World Trademark Review, in (August 2019). For further information, please go to www.worldtrademarkreview.com.