Supermac v Big Mac : Trademark Use Showdown

The Irish fast food-chain Supermac's, named after its director Pat McDonagh's high school nickname, has engaged in a trademark battle against McDonald's Big Mac.

Supermac has seen McDonald's as a "trademark bully" who has been threatening its expansion in the EU by blocking its trademark applications based on an alleged risk of confusion with the trademark "Big Mac", among others.

In its defense, Supermac filed an application to have the trademark "Big Mac" cancelled on the grounds of non-use for a period of five years. In an astonishing decision of the EUIPO cancelling the "Big Mac" trademark (EUTM No. 62638) for lack of evidence of genuine use, Supermac has just won this battle.

Say what? How is that even possible, when we all know that Big Mac is clearly sold in its McDonald's fast-food chains? 3 words:

Proof of use While anyone would assume that extensive use of the trademark "Big Mac" for burgers ("meat sandwiches") could be considered known by the Examiner and not requiring further proof, this was not the conclusion of the EUIPO Cancellation Division.

In light of this decision, we have identified some of the most important factors to keep in mind when putting a trademark to use and collecting data as proof of genuine use in connection with the registered goods and services.

According to Article 58(1)(a) EUTMR, the rights of the proprietor of the European Union trade mark will be revoked on application to the Office, if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union for the goods or services for which it is registered, and there are no proper reasons for non-use.

Genuine use requires actual use on the market of the registered goods and services and does not include token use for the sole purpose of preserving the rights conferred by the mark, nor use which is solely internal (11/03/2003, C-40/01, Minimax, EU:C:2003:145, in particular §35-37, 43).

The indications and evidence of use must clearly establish the following factors of use of the contested trade mark for the goods and/or services for which it is registered (Article 19(1) and 10(3) of EUTMDR) :

Place - it has to be clear from the evidence in which country the trademark has been used in relation to the goods or services

Time - it has to be clear during which period the trademark was in use, and the use had to have been within the "Relevant period"

Extent - takes into account all the surrounding circumstances including the...