The legal battle between McDonald's and Supermac's over the "Big Mac" trademark in the European Union reached a significant milestone with a ruling by the EU General Court. This ruling highlights the importance of adhering to best practices when providing evidence of specimen use in trademark law, and establishes a precedent for properly documenting genuine trademark usage, no matter the size of the company.
Background
Supermac's, an Irish fast food chain, challenged McDonald's trademark for "Big Mac," arguing that McDonald's had not genuinely used the trademark for products beyond the iconic burger, such as chicken sandwiches and restaurant services. Supermac's sought to revoke McDonald's trademark, claiming that it hindered their expansion plans in the EU.
Court's Ruling
The EU General Court ruled in favor of Supermac's, stating that McDonald's failed to prove genuine use of the "Big Mac" trademark for various products and services over a five-year period. The court found that the evidence provided by McDonald's was inadequate and insufficient to prove continuous and genuine use of the trademark.
Key Evidence Submitted by McDonald's:
- Affidavits from Company Representatives: McDonald's provided affidavits from company executives stating the use of the "Big Mac" trademark. The court deemed these insufficient as they lacked corroborating evidence and detailed sales data.
- Promotional Materials: McDonald's submitted brochures, printouts of advertising, and promotional materials featuring the "Big Mac" trademark. However, these materials did not include concrete evidence of distribution or circulation, making it difficult to ascertain their actual impact and use in commerce.
- Packaging Samples: Samples of packaging bearing the "Big Mac" name were presented, but the court noted that these did not include specific information about the volume of products sold or the duration of their use.
- Website Printouts and a Wikipedia Page: The printouts from McDonald's website and a Wikipedia page were criticized for not demonstrating consumer interaction or actual sales. The court emphasized that online presence alone does not prove genuine use unless it includes transactional evidence.
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Example evidence - printouts of advertising posters, on which, inter alia, the handwritten words ‘September – November 2016’ appear, and menu boards relating to the ‘Grand Big Mac Chicken’ (Annex 2 of EUIPO’s case file)
The decision allows Supermac's to potentially expand its presence in the EU without the legal hindrance of the "Big Mac" trademark owned by McDonald's (POLITICO) (International Business Times) (Courthouse News).
Implications for Trademark Professionals
- Importance of Concrete Evidence: The case underscores the necessity for robust, concrete evidence of trademark use in commerce. Internal documents and promotional materials are not sufficient without supporting external evidence such as sales data, invoices, and detailed third-party verifications.
- Regular and Comprehensive Documentation: Trademark owners must maintain ongoing documentation of how their trademarks are used across different products and services. This includes maintaining detailed records of sales and consumer interactions.
- Scrutiny of Online Evidence: Evidence from websites and online platforms must clearly show consumer engagement and commercial transactions to be deemed sufficient.
Best Practices for Trademark Specimen Preparation and Submission
- Maintain Detailed Sales Records: Keep comprehensive records of all sales transactions, including invoices, receipts, and purchase orders, to demonstrate genuine use.
- Document Advertising and Promotion: Record all advertising efforts, including distribution data and consumer engagement metrics, to provide a clear picture of the trademark's commercial presence. Social media comments and engagements should also be documented.
- Use Third-Party Evidence: Collect third-party articles, reviews, and awards as external validation of the trademark's use and recognition.
- Ensure Comprehensive Online Evidence: Provide detailed website analytics showing visitor engagement and actual sales or service bookings linked to the trademark.
- Conduct Regular Audits: Periodically review the use of the trademark to ensure continuous compliance with legal requirements and to update documentation as needed.
The McDonald's vs. Supermac's case highlights the critical importance of sufficient and robust documentation for trademark use. Trademark professionals must ensure that their clients maintain thorough and ongoing records to support their trademarks' genuine use in commerce, thereby safeguarding against potential legal challenges and maintaining their trademark rights.
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