Contact

Big Mac trademark invalid in EU

January 2019. McDonald’s European trademark for the words Big Mac, which it registered in 1998, was declared invalid in a ruling issued by the Cancellation Division of the European Trademark Office EUIPO on 11 January. The reason? McDonald’s was unable to show it had used ‘Big Mac’ as a word mark in the last 5 years.

Use

Trademark law states that owners must use their trademark if their rights to it are to remain valid. Failure to do so within a 5-year period means the registration could be cancelled at the request of a third party.

Formidable rival

Supermac’s, a formidable Irish rival to McDonald, had asked EUIPO to overturn McDonald’s registration to the Big Mac trademark due to non-use. You’d think it would be easy for McDonald’s to show evidence it had used the Big Mac trademark in Europe in the last 5 years. But it wasn’t.

McDonald’s evidence

So what evidence did McDonald’s present? Three statements from employees, a printout of a Wikipedia article, a handful of brochures and copies of its websites showing Big Mac sandwiches.

Insufficient

Unfortunately, that wasn’t enough for the Cancellation Division of European Trademark Office EUIPO, which concluded that statements from employees were of little value and that Wikipedia pages were unreliable since anyone could post on them. And as for brochures and websites, while it was true they showed the Big Mac trademark was being used, they revealed nothing about the extent of that use.

Extent

Essentially then, McDonald’s failed to show evidence of the volume of traffic on its websites, the number of orders that were being placed or how many brochures were distributed and where. Simply proving that a trademark is being used is not enough; you’ve also got to demonstrate the extent of that use.

Incredible that McDonald’s failed to show sufficient evidence of its use of ‘Big Mac’

Clear evidence

It’s incredible just how often major international companies make serious blunders when filing oppositions or instigating cancellation proceedings with the European Trademark Office. While there’s no doubt McDonald’s has used its Big Mac trademark, it’s nevertheless got to provide clear evidence to that effect.

New registration

So does this pose major problems for McDonald’s? Could another company make off with the Big Mac name? No, that won’t happen. It seems McDonald’s may have seen this coming, since it applied for a new registration in 2017.

Bas Kist