22 October 2019 - Article
“If the furnace is hot enough, anything will burn, even Big Macs”
This time it seems that the furnace – in our case the opposing party in a David/Goliath dispute – has not only burnt out the notorious hamburger, but also its just as much notorious trademark.
On 15 January 2019, the European Union Intellectual Property Office (“EUIPO”) issued cancellation decision no. 14 788 C regarding the “Big Mac” EU word trademark, no. 62638 (the “Trademark”), previously owned by McDonald’s for the goods and services of classes 29, 30 and 42 of the Nice Classification.
The match may seem a little one-sided at first glance, pivoting on a multi-national like McDonald’s against the much smaller Irish restaurants’ chain Supermac’s, which in 2017 challenged before the Cancellation Division of the EUIPO the validity of the Trademark, claiming that the same, though having the relevant application been granted dating back to 1998, has never been actually and genuinely deployed on the market by its owner.
In essence, the grounds of the claim by Supermac’s are based on the (now-accepted) allegation that McDonalds has “used” the Trademark merely as a roadblock on the path to enter the relevant market, therefore blocking the penetration attempts thereto by competitors, thus not being actually committed to spread the same among the public (at least, showing not to have put enough effort into it).
The ruling issued by the EUIPO stressed that, despite several affidavits displaying the sales volumes figures Big Mac hamburgers issued as evidence by McDonald’s in the proceeding, as such documents were not drawn-up by a third-party, therefore potentially affecting the reliability of their data. Likewise, the fact that the Trademark was shown in several advertising materials, as well on the official McDonald’s website, submitted by the latter in the proceeding, will not per se fit the purpose of showing how actually the Trademark was in effect deployed among the public (do not count on Wikipedia entries, which – according to the EUIPO – […] “As far as the printout from en.wikipedia.org is concerned, it is noted that Wikipedia entries cannot be considered as a reliable source of information, as they can be amended by Wikipedia’s users […]”).
Although the decision could still be brought by McDonald’s before the Boards of Appeal, the effect of this controversy (aside from drawing the attention of the public opinion) could be to leave the word sign “Big Mac” un-covered by an intellectual property right in the UE, at least until this becomes (once more) subject to a new filing for registration as a trademark.
A lesson business operators could learn from this may seem rather paternalistic, though this is an undeniable issue to be tackled by every EU trademark owner: a trademark registration is something to take care of, since, as it could constitute a (sometimes extremely) valuable asset, this could also fall off to (temporary) slumber if not adequately deployed, which, in our case, has occurred since, “[…] the EUTM proprietor has not proven genuine use of the contested EUTM for any of the goods and services for which it is registered. As a result, the application for revocation is wholly successful and the contested EUTM must be revoked in its entirety”.
As a last remark, the judgement in case T-61/61 of 2017 issued by the General Court could be considered as a sort of other-side-of-the-coin of the matter under examination, by taking into account another seemingly outmatching dispute between an EU trademark with reputation and a much lesser-known peer. The Court, argued that Coca Cola could validly oppose the registration in the EU of the sign “Master” by a Syrian company, which used the same font as its own for the marketing of beverages and food products, since this could constitute a potential encroachment on the Coca Cola proprietary anterior right, as long as it could prove the risk/chance of a commercial free-riding by the counterpart, though by logical inference (so, in such case, Goliath beat David by deduction, while, now, Goliath was defeated by its failure to provide genuine evidences).