As this blog mentioned, McDonald’s lost a trademark revocation procedure before the EUIPO in 2019, regarding its EU trademark BIG MAC. The revocation application was filed by the Irish fast food chain Supermac’s (Holdings) Ltd on the ground of an EU trademark not put to genuine use for a continuous five-year period.
The EUIPO revoked the mark finding McDonald’s evidence for real trademark use as insufficient. Of course, this decision was appealed.
No the Board of Appeal of the EUIPO annulled the previous decision stating that the mark’s use was proved for the following:
- In Class 29 – Foods prepared from meat and poultry products, meat sandwiches, chicken
- In Class 30 – Edible sandwiches, meat sandwiches, chicken sandwiches;
- In 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.
The Board found that EUIPO failed to assess properly some of the submitted evidence. For instance, although Wikipedia’s page devoted to the mark can be edited, it contains links to external reliable sources such as newspapers and magazines that provide information for Big Mac too.
In addition, McDonald’s submitted new pieces of evidence in the appeal. For example, in some countries, the so-called ‘Big Mac Index’ is very popular for comparing the cost of living.
Consumer surveys, financial papers, and additional ad materials were provided too, and all of them show extensive trademark use in countries such as Germany, France, the UK (before Brexit), etc.
What’s more, the Big Mac brand has been used only in relation to McDonald’s stores and not by other competitors which in turn shows the sign is capable to indicate a particular trade origin.
Based on this the Board of Appeal concluded that Big Mac has been used as a trademark on the territory of the EU for a continuous five-year period.