Burger King in Sweden recently poked fun at McDonald’s by changing its menu to refer to “Big Mac”. Anyone fancy a “Like a Big Mac, But Actually Big” burger or a “Kind of like a Big Mac, but juicier and tastier” burger?!

They were able to do this because of the recent revocation of McDonald’s EU trade mark for “Big Mac” through non-use.

Non-use?

The McDonald’s burger is so famous that it had hardened killers in Pulp Fiction discussing what it was called in France – Le Big Mac, of course. And yet, it has ended up losing its trade mark protection.

McDonald’s registered “Big Mac” as an EU trade mark in 1998. Supermac in Ireland applied in 2017 to revoke McDonald’s registration for lack of genuine use. The onus of proving use rests with the trade mark owner. So McDonald’s had to show evidence of genuine use during the 5 year period up to 2017. This means they had to show actual use on the market, not token use for the sole purpose of preserving the trade mark rights, nor internal use.

McDonald’s evidence included affidavits from employees in the UK, France and Germany claiming significant sales. It also included examples of sandwich boxes, brochures and posters, printouts from McDonald’s websites. They even referred to an entry from Wikipedia although, as anyone can edit those entries, that was never going to work! In fact, their evidence overall wasn’t enough. The EU Intellectual Property Office said:

“[T]he documents do not provide conclusive information that the products marked with the EUTM are offered for actual sale, as there is no confirmation of any commercial transactions, either online, or via brick-and-mortar operations”.

Having said that, the EU Intellectual Property Office pointed out that this finding of non-use was not due not to an excessively high standard of proof. It was due to the fact that McDonald’s had restricted the evidence it had submitted! There was also a suggestion in this case that the registration was too broad, covering too many goods but the judgment didn’t turn on this.

Not surprisingly, McDonald’s has indicated it intends to appeal and, in the meantime, is claiming it still has full trade mark rights for Big Mac throughout the EU.

What does this mean?

1. Use it or lose it! Remember, a trade mark is a mark of trade. If you don’t use it in the course of your trade in relation to the goods and services for which you registered it, you might lose protection.
2. Prove it! If you are faced with a revocation claim, make sure you can show genuine use of the mark in trade, ideally with sales data on particular dates.

Of course, we still wait to see how Brexit will affect EU trade mark registrations in the UK.