The EU General Court’s ruling in the BIG MAC case has generated considerable media interest, including articles on BBC News, Sky News and the Financial Times.
In its judgment on 5 June 2024, the Court partly annulled the Board of Appeal’s decision in a revocation case brought by Supermac’s against McDonald’s EUTM registration for BIG MAC. The revocation action was based on the ground of lack of genuine use of the mark for the goods and services for which it was registered.
The Board had found that McDonald’s had proved genuine use for certain goods and services during the relevant period (11 April 2012 to 10 April 2017). But the Court reversed that decision with regard to:
“chicken sandwiches” in classes 29 and 30;
“foods prepared from poultry products” in class 29; and
“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” in class 42.
BIG MAC “Chicken sandwiches”
Before the Board, McDonald’s had provided evidence of use of its mark for “chicken sandwiches” in classes 29 and 30, including printouts of advertising posters (pictured), screenshots of a TV advertisement and a screenshot of its Facebook page in France.
But the Court said that evidence did not “provide any indication of the extent of use of the mark in connection with those goods … in particular as regards the volume of sales, the length of the period during which the mark was used and the frequency of use”.
The Court added that the evidence did not make it possible to ascertain in what quantities, or with what regularity and recurrence, the goods concerned were distributed, saying: “That evidence cannot therefore on its own suffice to establish that the commercial use of the contested mark in connection with ‘chicken sandwiches’ was real.”
Moreover, the evidence did not indicate the price of the goods and McDonald’s had not provided any detailed sales figures. The Court said the company had merely shown that there was “insignificant use of the mark” in connection with chicken sandwiches with regard to 2016.
Supermac’s also challenged the registration insofar as it covered “foods prepared from meat and poultry products” in class 29. The Court said that as there was no use for “chicken sandwiches” there was no use in relation to “foods prepared from poultry products”. However, the registration for “foods prepared from meat products” was maintained as it was not possible to sub-divide that category of goods.
Moreover, the Board of Appeal was right to find that, by furnishing proof of genuine use of the mark in connection with “meat sandwiches”, McDonald’s had also furnished proof of genuine use in connection with “foods prepared from meat products”. The same reasoning applied to “edible sandwiches” in class 30.
Services in class 42
The Court said the Board of Appeal was wrong to equate “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” in class 42 with fast-food restaurant services.
In addition, none of the evidence of use of BIG MAC provided by McDonald’s referred to the restaurant services concerned, even if they were understood as fast-food restaurant services. It related only to “meat sandwiches”.
The Court found there was no “solid and objective evidence” of actual use of the mark in connection with those services.
What does this mean?
As the Board had examined all the evidence that McDonald’s had submitted, the Court decided it had the power to alter the decision insofar as it was annulled. The decision is therefore final, unless McDonald’s successfully appeals to the CJEU.
The case is a very good example of the need to demonstrate the nature and extent of use through evidence such as sales and revenue figures, marketing campaigns and customer feedback. Merely providing examples of advertising or marketing may not be enough to show use, if it is not backed up by proof that the use is for the relevant goods and services in the relevant market and during the relevant time. The evidence must be solid and objective, and the use must be significant.
While this is an unusually high-profile case, the lesson applies to any trade mark proprietor: if called on to prove genuine use, you need to present all appropriate evidence and ensure it supports your case. For more information on how to do this, please do contact us!
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com