The Big Mac Conundrum: When Trademark Fame Isn't Enough

Yashna Luthra

Last month saw a BIG sMACkdown of the US fast-food giant, McDonald’s, which lost the legal battle to its Irish counterpart, Supermac’s, to continue to use its trademark BIG MAC in relation to a broader range of products and services in association with which it was initially registered.

?This judicial conflict dates back to when Supermac’s an Irish fast-food chain was thinking of expanding its operations in the UK and EU and as such applied for a trademark registration in relation to restaurant services. This move was, however, opposed by the fast-food titan stating that the name was too similar to its registered mark “BIG MAC” and would cause confusion amongst the customers. And although, McDonald’s saw partial victory in its opposition attempt as Supermac’s was granted the right to use the trademark only in relation to its restaurant name and not for its food and drink items; Supermac’s played its counter move by filing an application before the EUIPO (European Union Intellectual Property Office) seeking revocation of the BIG MAC trademark on the grounds of non-use in 2017.

?Supermac's also secured a partial victory when the EUIPO partially upheld its application, leading to the cancellation of the "BIG MAC" trademark for certain goods and services. This includes products like preserved and cooked fruits and vegetables, eggs, cheese, milk, pickles, desserts, biscuits, bread, chocolate, coffee, mustard, and consulting on restaurant design and construction. However, the EUIPO retained the "BIG MAC" trademark registration for categories including meat and poultry products, meat and chicken sandwiches, as well as restaurant services and drive-through facilities.

?What followed this was a clear indication from the 46-year-old Irish fast-food franchise, with its humble beginnings in? Ballinasloe, County Galway, Ireland, that it would not be fazed by the fast-food behemoth’s attempt to stifle competition by resorting to “trademark bullying” of smaller business and would certainly not settle for a half-baked victory.

Supermac’s appealed the EUIPO’s decision to the General Court. The General Court further limited the protection of the BIG MAC trademark by partially annulling and amending the EUIPO’s decision. On examination of the various evidence submitted by McDonald’s, the General Court found that there was want of ‘genuine use’ of the ‘BIG MAC’ trademark in relation to ‘chicken sandwiches’, ‘foods prepared from poultry products’, and ‘services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and drive-through facilities; preparation of carry-out (“drive-in”) foods’.

?The General Court concluded that the evidence provided by McDonald’s failed to demonstrate the scope of the "Big Mac" trademark’s usage concerning those goods and services, particularly in terms of sales volume, the duration of trademark usage, and the frequency of its use.

?Now, there are multiple takeaways from this ruling of the General Court with the most important one being that certain jurisdictions like the EU follow a “use it or lose it” principle. What this implies is that if a trademark has not been put to “genuine use” within five years from the date of its registration and every five years thereafter in respect of all the goods and services in relation to which it is/was registered, then it loses its exclusive right to not only use that trademark but also prevent other from using it.

?This ruling is a classic David versus Goliath-style victory, emphasizing the fact even well-known companies and their globally renowned trademarks are not immune to this requirement.?

?McDonald's, in its attempt to hold its ground, submitted tons of additional evidence including a wide array of promotional and marketing materials, such as images from TV commercials and photos of outdoor ads accompanied by statements from advertising agencies, consumer surveys, and screenshots of videos posted by third parties on YouTube. Additionally, they provided Google Analytics reports showing website visitor counts and financial audits detailing the number of BIG MAC units sold. However, these did not suffice the genuine use requirement and on being examined by the General Court, were held as not indicative of the volume of sales, the length of time during which the trademark was used and the frequency of use.

Therefore, if you have applied for your mark to be registered as an EUTM then it? needs to be put to ‘genuine use’ for each and every good and service mentioned in the application. Failure to do so would result in whole or partial cancellations depending on the scale of non-use. Furthermore, a mark being used in relation to ancillary or similar goods/services would not tantamount to genuine use in respect of goods/services it is specifically registered for. No matter how well-known a mark is to the public, its fame it cannot be inferred as ‘genuine use’ or meeting its requirements.

?So, this brings us to an important question. What is ‘genuine use’ and what is the standard of proof of ‘genuine use’? The answer to these questions are not only contained in the EUIPO Guideline but also many of the rulings of the ECJ and the EUTM Regualtions and Directives.

?To sum it up, genuine use means the trademark is used in a real and substantial way and consistent with the essential function of a trademark, which is to guarantee the identity of the origin of goods or services to the consumer or end-user, reflecting its purpose to create or maintain market share for the goods or services it covers, as established in key cases like Ansul BV v. Ajax Brandbeveiliging BV and Minimax GmbH & Co. KG v. Chubb Fire Ltd. This use must be more than token or symbolic, serving solely to preserve the rights conferred by the mark and must align with normal commercial practices, considering the nature and extent of use within the market context. The use must occur within a five-year period following registration and can be direct or through a licensee, involving actual market presence, advertising, or promotion, as clarified in cases such as La Mer Technology Inc. v. Laboratoires Goemar SA and Colloseum Holding AG v. Levi Strauss & Co. The decision in Leno Merken BV v. Hagelkruis Beheer BV further emphasizes that genuine use must be assessed based on the intended market within the EU, not merely in one Member State.

?The standard of proof for ‘genuine use’ as elucidated by the EUIPO is not particularly high. The Court has also indicated that it is impossible to prescribe a rigid formula or a quantitative minimum threshold to determine whether use qualifies as genuine. While a minimum extent of use must be demonstrated, what constitutes this minimum extent depends on the specific circumstances of each case. On top of that, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 22).

?According to Article 10(3) EUTMDR, the indications and evidence required in order to provide proof of use must concern the place, time, extent and nature of use of the opponent’s trade mark for the relevant goods and services. Which apparently, McDonald’s failed to establish despite the plethora of evidence it submitted.

?The ruling significantly impacts McDonald's use of the BIG MAC trademark, restricting its application to meat-based foods and sandwiches. As a result, McDonald's loses exclusive rights over items such as 'chicken sandwiches' and 'foods prepared from poultry products,' as well as its restaurant services. While this decision creates opportunities for other companies, like Supermac’s, to broaden their product range under a similar name, McDonald's still retains some leverage. Competitors must demonstrate that their use of a similar name would not likely confuse the public or exploit the goodwill and reputation that McDonald's has built around the Big Mac brand.

?A crucial lesson from this case is the importance of avoiding overly broad trademark registrations. Registering a trademark across too many categories can invite revocation actions from third parties. Competitors may take advantage of this by registering and using their own marks for goods or services where the original trademark holder has not actively used their mark.

This legal saga serves as a vivid reminder that even the most iconic brands must meet rigorous standards to safeguard their trademarks. The Big Mac case reveals the fine line between holding onto a trademark and genuinely utilizing it. For all businesses, the lesson is clear: your brand’s fame alone won’t protect it; consistent market presence and active use are crucial.

?As we navigate the ever-shifting landscape of intellectual property, one thing remains constant: the need for vigilance. Just as McDonald’s faced its Big Mac conundrum, so too must all trademark holders keep their mark firmly planted in the marketplace. In the end, it’s not just about having a legendary name; it’s about proving that legend lives on in every facet of commerce. So, as brands strive to make their mark, remember: a trademark’s true power lies in its active, ongoing presence, not just in the fame it commands.

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