WHY MCDONALD’S MAY LOSE THE BIG MAC TRADEMARK IN EUROPE?

20 February 2019

It has not been a good start for McDonald’s this year, as in January, the news that the major company has lost its EU trademark protecting BIG MAC spread like wildfire. Since the decision can be subject to an appeal, it would be premature to consider the loss of the trademark as a fact, however, the lesson can already be drawn, which we present in our article along with the details of the case.

“War on burgers”, with McDonald’s defeat

The decision is rather uncomfortable for McDonald’s, as the underlying legal dispute has been ignited by the US giant, when they wanted to prevent the expansion of the Irish fast food chain Supermac by legal means.

McDonald’s wanted to make the use of the name Supermac impossible for the Irish company, arguing that the restaurant’s name could be confused with BIG MAC, which is the trademark of McDonald's within the EU.

The Irishmen took up the gauntlet and filed an application for revocation due to lack of genuine use to the European Union Intellectual Property Office (hereinafter EUIPO or Office) against McDonald’s trademark.

The process ended with a surprising result, the Office found that McDonald's had not proved sufficently that they had used the trade mark in accordance with EU law, thus revoked McDonald’s rights to use the word BIG MAC.

The reasons for McDonald’s defeat

At first sight, it is hard to understand how McDonald's could have lost its trademark, as almost everyone has heard of BIG MAC and is clearly linked to McDonald's.

The causes of the defeat are to be found in some specific features of EU trademark law and in the questionable legal strategy of McDonalds during the process.

Unused category of the trademark

The essential feature of trademarks is that they do not guarantee exclusivity for use in all areas, the protection covers only those areas of the market, for which the trademark is registered.

The Office uses the so-called Nice Classification, based on which, trademarks are linked to certain categories of goods and services.

For example, if someone produces chocolate bars under the name "Yellow Tram" and registers the trademark in categories related to food, another entrepreneur can open a pub with the name “Yellow Tram” without any problems.

The BIG MAC trademark has been registered in several categories according to the Nice Classification, McDonald's not only registered the term in food categories, but also as a restaurant name.

Since the use of the trademark has to be proven concerning all EU member states, McDonald's has already failed in Hungary, because we haven't seen a single BIG MAC restaurant yet.

Reversed burden of proof

Now you can see, why it is problematic that McDonald's reserved BIG MAC as a restaurant name, although they did not use it. However, this is only one part of the story, as McDonald's is facing to lose the right to the trademark in all categories, so, for hamburgers as well.

The main cause of the defeat is the legal steps taken by McDonald's during the proceedings, or rather the lack of them.

The specificity of the procedure initiated by Supermac is the "reverse burden of proof", which means that it is not for the applicant to prove that their application is well founded, but for the trade mark proprietor to show that they are using the trademark properly.

Although this situation may harm the interests of the trademark proprietor subject to the proceeding, it shall be taken into account, that otherwise the applicant would have to prove the absence of a fact, in case of which attaching data or photos is much more difficult than proving the existence of something.

In its decision, the Office pointed out that McDonald's had lost the procedure because the genuine use of the trademark had not been proven sufficiently, as they submitted evidence such as:

• 3 affidavits signed by McDonald's representatives, detailing the use,
• printouts of advertising posters and BIG MAC boxes,
• Wikipedia article providing information on the history of Big Mac.

The Office found that the above evidence provided by McDonald's was insufficient to prove genuine use, underlining that all evidence came from within the company and not from external sources, furthermore, it was not possible to establish what business results have been achieved with the BIG MAC products and finally, the Office noted that Wikipedia cannot be considered an reliable source, since it can be edited by anyone.

Conclusion:

Based on the decision, it is clear that McDonald's lost the procedure due to the failure of providing sufficient evidence. The important lesson for all trademark owners is that if the proprietor is unable to adequately prove the genuine use of the trademark during the procedure, even such classic trademarks can be revoked as the name of McDonald’s famous hamburger.

If you want to protect the trademarks of your business, we suggest consulting a legal expert in trademark proceedings.