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Case law: Shock Big Mac ruling gives guidance on when trade mark can be revoked for lack of ‘genuine use’

Trade mark owners should ensure they are making ‘genuine use’ of their trade marks under the relevant tests, and can produce sufficient evidence to convince the trade mark registry they are doing so - or risk their trade marks being revoked, a shock ruling makes clear.

July 2019

This update was published in Legal Alert - July 2019

Legal Alert is a monthly checklist from Atom Content Marketing highlighting new and pending laws, regulations, codes of practice and rulings that could have an impact on your business.

Failure to make genuine use of a mark for five years or more can mean it is liable to be revoked. The burden is on the trade mark owner to prove there has been genuine use.

In a dispute between McDonalds, the high street food chain, and an Irish fast food chain, the Irish business applied to revoke McDonald’s BIG MAC European Union trade mark on grounds it had not been used in the EU for five years between 2012 and 2017.

McDonalds claimed that it had made genuine use of the mark in that period. It said it was common knowledge that it sold millions of food items using the BIG MAC trade mark and produced evidence such as packaging, sworn statements by employees throughout the EU, printouts from its websites in Europe and quotes from the Wikipedia entry about the Big Mac burger.

However, the EU Intellectual Property Office (EUIPO) ruled that this was insufficient evidence. The relevant law requires evidence of the place(s) the trademark has been used, the period it has been used, the extent of its use (taking into account all the surrounding circumstances, eg, the nature of the goods and services covered by the mark, the characteristics of the relevant market, the geographical extent of the use and volumes of sales, including for how long and how frequently sales were made) and the nature of the use.

The EUIPO decided that McDonalds had failed these tests and revoked the BIG MAC EU trade mark. It said McDonalds should have considered producing all or any of the following:

  • independent evidence that the mark had a ‘real commercial presence’;
  • comprehensive evidence of actual or potential purchases of trade marked items.<

Particularly, it noted that a Wikipedia entry is not a reliable source of evidence and, in relation to evidence of use of trade marks on a website, details of the place, time and extent of use of the mark is required.

Unsurprisingly, McDonalds has appealed, so this is not the end of the story. However, the case highlights the importance of putting together proper evidence of use if your trade mark is challenged.

Operative date

  • Now

Recommendation

  • Trade mark owners should ensure they are in fact making ‘genuine use’ of their trade marks as per the relevant tests, and can also produce sufficient evidence to convince the relevant trade mark registry that they are - or risk their trade marks being revoked.

Case ref: EUTM No. 62638

Disclaimer: This article from Atom Content Marketing is for general guidance only, for businesses in the United Kingdom governed by the laws of England. Atom Content Marketing, expert contributors and ICAEW (as distributor) disclaim all liability for any errors or omissions.

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