When an underdog successfully encounters a giant in intellectual property disputes

McDonald´s “new” competitor is the Irish fast food chain Supermac´s, having approximately + 3000 employees, in contrast to MacDonald’s ~ 235,000. This case is a great example of when an underdog successfully encounters a giant in intellectual property disputes.

The case and background

How could the famous trademark BIG MAC not be considered genuinely used by McDonald’s? Get the “whys” and the lessons of the revocation of the trademark BIG MAC due to insufficient evidence of proving the use of the trademark.

The decision made by the European Union Intellectual Property office (EUIPO) to revoke the trademark registration of the wordmark “BIC MAC” could at first glance be considered as a ”fake news” prank. However, a search in the EUIPO database will show that the case is true.

In this case, Supermac´s applied for revocation of BIG MAC on the 11th of April 2017. When submitting a revocation application to the office, it is possible to revoke the rights to a European Union trademark if the trademark has not been genuinely used by the applicant within 5 continuous years in a number of the member states.[1]  The burden of proof lays on the holder of a European Union trademark registration.

According to the EUIPO, the trademark holder must show that the commercial exploitation is genuine.[2] However, it does not mean that the holder must show that the trademark has commercial success. The evidence of use must therefore contain information of the:

  1. place,
  2. time,
  3. extent and
  4. nature of the use. [3]

The evidence provided in the case was foremost affidavits from employees and company representatives, brochures, printouts from advertising posters and product packages, printouts from the holder´s websites and a printout from Wikipedia.

The decision

The office declared the cancelation request to be successful and revoked the trademark registration. Why? The office concluded that the submitted evidence was not enough to prove the use of the trademark in the foremost following grounds (according to my analysis). The owner failed to show:

  1. Third-party statements and market surveys. (Page 4) Affidavits and statements were made by employees and company representatives and not third parties.
  2. External circulation of the trademark (page 4). The submitted materials solely consisted of material which was developed internally.
  3. A reliable external source. (Page 5 the decision) Wikipedia was not considered to be a liable source since it can be edited by everyone.
  4. Commercial exploitation (Page 4 the decision). The necessary information of commercial numbers in relation to the trademark was not submitted.
  5. Market interactions (Page 4 the decision). Information regarding the circulation of advertisement and products in relation to the market was neither submitted.

The evidence did to an extent show the relevant time and place but did not clearly demonstrate the extent and the nature of the use.[4] In particular, the evidence did not provide conclusive information that the products are involved in any commercial transactions. The evidence lacked information about the use of the relevant services completely[5].

The methods and means of proving genuine use of a mark are unlimited. The finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that the EUTM owner chose to restrict the evidence submitted (The EUIPO in the decision page 6).

The conclusion and my analysis

My analysis of the same is that the evidence was not market-centric but instead company-centric – wherefore the trademark owner failed to show the external use of the trademark. For my part, the case of BIG MAC truly underlines that we are all equal before the law, or at least in revocation proceedings at the EUIPO. The case demonstrates the standpoint of EUIPO when exclusively taking submitted evidence and not subjective opinions into consideration. As a thought experiment, I want you to imagine that the examiners instead would be called as expert witnesses in this case; wouldn’t they likely to appoint the BIC MAC as a well-known trademark (as many of us would)?

I consider the decision of the EUIPO nonetheless to be fair. The examiners were not called as expert witnesses but acting in their role as examiners. It was not the legal system that failed, it was the planning and gathering of the evidence that did.

The effect

What trademark holders and intellectual property practitioners should remember from this case is that the mere presence of a website and the existence of physical products does not equal to commercial exploitation of a trademark. Instead, evidence of use should contain credible data showing the customer relationship towards the trademark, in plain numbers and supported by third-party statements and information.

In conclusion, do not fear revocation proceedings. Just make sure that if you ever encounter one, gather credible and external retrieved information that shows the exploitation of the trademark in the relevant market – it´s about facts!

[1] Article 58(1)(a) EUTMR.

[2] Page 3 of the mentioned decision.

[3] 19(1) EUTMDR and Article 10(3) EUTMDR.

[4] Page 4 of the mentioned decision.

[5] Page 6 of the mentioned decision.

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