Invalidation of EU trademark “Big Mac” due to not providing any indication of its genuine use

No indication of genuine use of the trademark may result in its invalidation as turned out for the company managing trademarks of fast-food chain McDonald’s.

In the dispute between McDonald’s and Irish chain Supermac’s there was an application filed for revocation of the mark “Big Mac” that was registered by McDonald’s in 1996.

The mark was registered for three classes of goods and services:

• Class 29 – Foods prepared from meat, pork, fish and poultry products, meat sandwiches, fish sandwiches, pork sandwiches, chicken sandwiches, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles, desserts;
• Class 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;
• Class 42 – Services rendered or associated with operating and franchising 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 designing of such restaurants, establishments and facilities for others; construction planning and  construction consulting for restaurants for others.

The European Union Intellectual Property Office (EUIPO) in the first instance granted the application in its entirety, stating that McDonalds’s failed to prove that was genuinely using the mark.

However, in the second instance, in the decision of 14 December 2022, EUIPO stated that the mark should be invalidated only partially and the registration should be kept for the following classes of goods:

• class 29: ‘Foods prepared from meat and poultry products, meat sandwiches, chicken sandwiches’;
• class 30: ‘Edible sandwiches, meat sandwiches, chicken sandwiches’;
• 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’.

In the judgment of 5 June 2024, in case T-58/23, the ECJ altered EUIPO’s decision and invalidated the “Big Mac” trademark in its entirety

The Court stated that McDonald’s has not proved genuine use in connection with goods “chicken sandwiches”, “foods prepared from poultry products” and services “rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption for drive-through facilities; preparation of carry-out foods”.

The evidence submitted by McDonald’s such as statements regarding the sale of “Big Mac” sandwiches in France, Germany and the United Kingdom, sample packaging of sandwiches, advertising brochures and restaurant menus, printouts from local websites and Wikipedia page about the “Big Mac” sandwich were considered insufficient to show the genuine use of the mark for a period of 5 years after its registration.

The course of proceedings concerning the “Big Mac” trademark and its outcome shows how important the evidentiary issues are in the proceedings regarding the actual use of marks. The burden of proof then rests with the owner of the mark. Failure to submit appropriate evidence documenting the actual use of the mark for specific categories of goods and services – even if the mark is widely associated – may result in the loss of protection.

The strategy of registering the mark in many classes, as practices by many companies, may turn out ineffective if it is not possible to prove that the mark is actually used to designate given goods or services.

• judgment of the General Court (EU), case T-58/23