Supermac revoked another McDonald’s trademark in the EU

pexels-photo-2083959.jpegThe Irish company Supermac succeeded for the second time to revoke a McDonald’s trademark. This time the attack was initiated against a European trademark “MC” with a priority date back to 2011, registered for the following goods and services:

29 – Foods prepared from meat, pork, fish and poultry products, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles.

30 – Edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar; desserts.

32 – Non-alcoholic beverages, syrups and other preparations for making beverages.

43 – Restaurant services.

The reason for this revocation was Article 58(1)(a) of the EUTMR, lack of genuine use for a period of 5 consecutive years.

McDonald’s submitted various pieces of evidence such as affidavits from heads of various McDonald’s European legal departments, menus, printouts, extracts from Annual Reports and surveys.

Unfortunately, some of them were outside the prescribed period of five years and some were even undated.

In light of this, EUIPO upheld the revocation request for most of the goods and services. The arguments were that there was no solid evidence for genuine use. What’s more, the trademark “MC” had never been used alone but only in combination with other words such as ‘McDonald’s’, ‘BIG MAC’, ‘McRIB’, ‘McMUFFIN’, ‘McTOAST’, ‘McFISH’, ‘McWRAP’, ‘McNUGGETS’, ‘McCHICKEN’ and ‘McFLURRY’.

According to EUIPO signs such as ‘McDonald’s’ and ‘BIG MAC’ were not variations of the main trademark “MC”. Others of the trademark such as McMUFFIN’, ‘McFISH’,  ‘McNUGGETS’, ‘McCHICKEN’ were OK because the additional words were completely descriptive.

Taking into account all of this EUIPO revoked the “MC” trademark with exceptions of:

Class 29: Chicken nuggets.
Class 30: Edible sandwiches, meat sandwiches, pork sandwiches, fish
sandwiches, chicken sandwiches.

The full text of the decision can be found here.

McDonald’s lost a Big Mac dispute in the EU

pexels-photo-1600727McDonald ’s lost a trademark dispute with the Irish food chain Supermac’s regarding its European trademark ‘Big Mac’. The Irish company attacked this mark with a request for cancelation based on a lack of genuine use on the territory of EU.

According to the EU law, if the trademark owner doesn’t use its mark for a period of 5 years before the cancelation request, he can lose the rights over its mark unless evidence for genuine use is submitted.

McDonald’s did exactly this, submitting affidavits with sales figures under the grand as well as brochures and printouts of the company’s websites and a Wikipedia page providing information on the Big Mac.

According to the EUIPO, however, these materials don’t show a real use of the aforementioned trademark. First of all, affidavits are signed by McDonald ’s employees which give them less weight because they are not independent evidence.

Regarding the brochures, there was no information on how they were used and whether they reached the consumers. The printouts from the company’s site can’t show any interactions with the consumers or any sales.

“Wikipedia entries cannot be considered as a reliable source of information”, as they can be edited by the website’s users, the ruling said.

It is highly likely that McDonald ’s will appeal this decision. Nevertheless, this case clearly shows the need for thorough preparation when it comes to gathering evidence for such trademark disputes because otherwise the trademark rights can be threatened.

Source: WIPR.