On January 11, 2019, the European Union Intellectual Property Office (EUIPO) cancelled McDonald’s International Property Company, Ltd.’s European Union registration for BIG MAC, at the request of Supermac’s (Holdings) Ltd. The Cancellation was initiated as part of an ongoing dispute between McDonald’s and Supermac’s over use of the term MAC, and the initiation of the Cancellation came as no surprise. The decision, however, should surprise and concern brand owners throughout the EU.
At its core, the EUIPO’s decision indicates that brand owners have a new, very stringent standard to prove use of a registered mark in the EU. If the BIG MAC decision is correct in its application of EUIPO evidentiary standards, brand owners must (a) provide third-party examples of how its own brand has been used with its goods/services in the EU, (b) have a third-party provide very specific data concerning its sales, and (c) demonstrate beyond a shadow of a doubt that the examples of use and data provided are directly linked to how EU consumers experienced the mark in connection with tangible sales throughout the EU and not in a few select member countries. Sound confusing and unreasonable? I agree.
At the outset, it is important to note that the BIG MAC registration covered two Classes of goods (29 and 30) and one Class of services (42), and the evidence proffered only appeared to support some of the identifications: Food prepared from meat…meat sandwiches… in Class 29 and edible sandwiches, meat sandwiches… in Class 30. The remaining identifications in Classes 29 and 30 appear to go beyond BIG MAC offerings (pork, eggs, cakes, cookies, and other food items that have no place in a BIG MAC sandwich) and the Class 42 services appear to be more appropriate for the MCDONALD’S house mark, such as restaurant franchising and construction consultation services. However, if we focus on McDonald’s attempt to retain BIG MAC at least in connection with meat sandwiches, the evidence appears to favor McDonald’s.
Specifically, the Cancellation decision notes that McDonald’s provided the following evidence to demonstrate its use of the BIG MAC brand in the EU:
- Detailed Affidavits. Three (3) affidavits “signed by representatives of McDonald’s companies in Germany, France, and the United Kingdom” (all three are current EU member countries) detailing “significant sales figures in relation to ‘Big Mac’ sandwiches for the period between 2011 and 2016” that attached examples of “packaging of the sandwich (boxes), promotional brochures, and what appear to be menus.”
- Brochures. Brochures in German, French, and English showing BIG MAC meat sandwiches between 2011 and 2016.
- Posters. Advertising posters in German, French, and English showing BIG MAC meat sandwiches between 2011 and 2016.
- Point-of-Sale Packaging. Packaging for sandwiches (boxes) between 2011 and 2016.
- Websites. Website printouts from 18 McDonald’s ccTLD domains (.de, .fr, etc.) from July 1, 2014 to March 10, 2016 depicting BIG MAC “sandwiches, some of which state that they are sandwiches made with beef meat.”
- Wikipedia. A wikipedia.org printout discussing the BIG MAC “hamburger, its history, content and nutritional values in different countries.”
All of this evidence was discounted by the EUIPO because:
- The affidavits were “signed by the representatives/employees of the EUTM proprietor” and therefore they are “given less weight than independent evidence…because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter.” While this may make sense where a brand owner is stating that its mark is distinctive or does not cause confusion with a third-party’s mark, this makes no sense where the primary purpose of the affidavits are to enter specific data points into the evidentiary record. In most cases, brand owners will not have an objective outside party who can attest to such facts. By discounting this data, the EUIPO effectively destroyed McDonald’s only chance of proving use in the EU.
- The brochures, posters, packaging, and website evidence were also discounted because they originated “from the EUTM proprietor itself.” Again, if a brand owner is not permitted to prove its use of a mark, it is unclear who would be in the best position to do so.
- The Internet evidence was also discounted because “the mere presence of a trade mark on a website is, of itself, insufficient to prove genuine use unless the website also shows the place, time and extent of use or unless this information is otherwise provided.” (As a reminder, the website printouts spanned 18 ccTLDs within the EU and bore dates ranging from July 1, 214 to March 10, 2016.) Because the websites appeared to be advertisements for BIG MAC sandwiches, and not records of specific orders, the EUIPO concluded that there was no “connection between the EUTM proprietor’s websites…and the eventual number of items offered.”
- The packaging and brochures were specifically discounted because it was unclear “whether they have led to any potential or actual purchases.” While it may not be clear what the conversion rate of brochures to BIG MAC purchases was, the packaging’s use in actual sales was surely substantiated by the data contained in the affidavits, but that evidence was ignored as biased.
- The Wikipedia page was discounted as not “a reliable source of information,” although that appears to be one of the few pieces of evidence arguably originating from a third-party, as the EUIPO expressly requested when presented with evidence directly from McDonald’s.
So, what can brand owners learn from this decision?
- Enlist Third-Parties—NOW. If there is an objective, third-party who can attest to specific sales figures, that evidence appears to be critical. For example, it may have been possible for third-party delivery or online ordering services to attest to certain BIG MAC sales figures. An outside accounting or CPA firm with access to the sales figures may also have been given more weight than McDonald’s employees themselves. Given that the EUIPO appears to distrust data stemming from brand owners, it will be important for brand owners to find outside allies.
- Track Data (in Compliance with the GDPR). Brand owners should on a regular basis track website traffic and IP address locations, in case this evidence is needed at a later date. Specifically, the EUIPO noted that “records relating to internet traffic and hits attained at various points in time or…the countries from which the web page has been accessed” would have been useful. This desire for greater web metrics will, of course, have to be measured against the new GDPR requirements.
- Enlist Customers. It may be necessary to bother your consumers. If McDonald’s had asked customers with EU IP addresses to fill out an online survey asking whether/where/how many BIG MAC meat sandwiches they had purchased throughout the EU between 2011 and 2016, and whether they viewed BIG MAC as an indication of source for meat sandwiches stemming exclusively from McDonald’s, it is possible this data point may have been persuasive to the EUIPO.
- Prove Use Throughout the EU, If Available. Your evidence should not focus on a few EU member countries, if greater use is available. The EUIPO specifically blasted McDonald’s “extent of use” demonstrated by the evidence, which primarily focused on use within Germany, France, and the United Kingdom, with the exception of the 18 ccTLD websites.
- Keep Records. Keep meticulous records concerning sales, advertisements, services provided, and the mark(s) involved with each transaction.
The dispute between Supermac’s and McDonald’s has been described as a “David vs. Goliath” fight between an Irish-based food chain and a global food chain. McDonald’s has an opportunity to appeal, and I hope they do. If the evidence of use provided for the BIG MAC trademark in this Cancellation is truly insufficient to maintain an EUIPO registration, many other brand holders will find it difficult to ward off a Cancellation challenge in the EUIPO.