BIG MAC off the menu?

While McDonald's has time to appeal this decision, this case is a reminder to trade mark owners to ensure that they can demonstrate genuine use of their registered trade mark(s) when called to do so.

Registered trade marks in the European Union are subject to the requirement of use after five years of registration. Therefore anyone can challenge a registration for non-use once the initial five year period has passed. It is then incumbent on the registered proprietor to show the trade mark has been put to genuine use for the goods and services covered by the registration.

The application for revocation of the registration was filed by Supermac's (Holdings) Ltd., on 11 April 2017. Proof of use of the BIG MAC trade mark was required for the five year period immediately preceding this date. The Cancellation division considered that the evidence put forward by McDonald's was insufficient to show genuine use of its trade mark in the European Union. The registration of the trade mark which was effective from 1 April 1996 will be revoked from 11 April 2017, should the decision become final.

It is important to bear in mind that the European Union trade mark office assesses use strictly on the basis of the evidence before it, and it is vitally important that the evidence of use is therefore cogent, comprehensive and robust. Despite the fact that a trade mark may be well known to the lay person and in use, this must nevertheless be proved by the documents submitted. Even if the applicant for revocation concedes that there is use of the trade mark on its review of the evidence, the office may reach a different conclusion based on its own assessment of the evidence.

Use must be genuine and show commercial exploitation of the trade mark. Typically the evidence should be able to show the place, time, frequency, nature and extent of use of the trade mark.

Owners should be mindful to keep dated records and be able to produce robust evidence of use including any online and third party evidence if available, to show the presence of the trade mark on the market.

It is useful to periodically review these records, and consider strengthening the scope of protection, if necessary. This is particularly relevant where the marks are core marks and of long term interest and where competitors are likely to try to use marks that may come too close.