Supermac’s Lovin’ the Revocation of the “BIG MAC” EU Mark
In a surprising blip in the usually successful litigious history of McDonald’s, the European Union Intellectual Property Office (EUIPO) has revoked the multinational fast food giant’s “BIG MAC” trade mark in the European Union (EU).
Ireland-based food chain Supermac’s applied in 2017 for the cancellation of the registered mark due to non-use. The EUIPO found that McDonald’s had not genuinely used their mark across the EU in the 5 years prior to the lodgement of the non-use application.
GENUINE USE IN THE EU
The term “genuine use” is not explicitly defined by the EU Trade Mark Regulation and interpretation of the term is based on case law in the EU. Several overarching factors that are considered in determining actual and not merely token use include the nature of use, place of use, time of use and extent of use.
For instance, within the 5 years preceding the lodgement of a non-use application, there must be a clear link between the use of the EU mark across the EU and the relevant goods and/or services for which the registration pertains to. These factors are not exclusive to the EU as they often apply to the concept of genuine use in jurisdictions across the globe, including in countries such as Australia and the United States.
IMPLICATIONS OF THE JUDGMENT
This decision illustrates the importance of not only registering a trade mark, but also actually using the mark in the course of trade for the relevant goods and/or services contained within the registration.
Other companies may finally be able to use similar names to “BIG MAC” in the EU without fear of reprisal from McDonald’s. For example, Supermac’s now intends to expand across the EU, as their brand name is no longer blocked by the “BIG MAC” mark.
However, McDonald’s still has the option to appeal the decision and reinstate the registration of their “BIG MAC” mark in the EU.
How Can We Help?
Contact us now if you have queries regarding:
Use of your trade mark and whether your trade mark portfolio is vulnerable to attack for non-use.
How you may protect your trade marks in the United Kingdom and EU, especially since Brexit is almost upon us. Please see our previous article regarding the effect of Brexit on trade marks for more information.
This article intends to outline some of the trade mark issues that you may need to address with your legal counsel when protecting or advertising your trade mark. It does not go into great depth with the subject matter, but offers useful insights into the basics. It is not legal advice and it is not exhaustive of all laws and issues that may apply to your particular business. Qualified legal counsel should review the details of your trade mark protection or advertisement in the relevant jurisdictions.