The General Court has rendered its decision in the case regarding genuine use of the BIG MAC trademark. The decision underlines the importance of providing sufficient documentation to substantiate genuine use of a trademark.
The decision by the General Court is the latest chapter in a series of cases relating to the trademark battle between Supermac's (Holdings) Ltd ("Supermac's") and McDonald's.
Since 1996, McDonald's has been the owner of an EU trademark registration for BIC MAC, covering goods in classes 29, 30 and 42.
In 2017, Supermac's filed a revocation action against said BIG MAC trademark which led to cases before the EU Cancellation Division and the EU Board of Appeal.
One of the main issues in the cases before the Cancellation Division and the EU Board of Appeal was whether McDonald's had submitted sufficient evidence to substantiate genuine use of the BIG MAC trademark. In the first instance decision, the Cancellation Division found the submitted evidence to be insufficient and revoked the BIG MAC trademark in its entirety. In the appeal case, McDonald's submitted a significant amount of additional evidence which the Board of Appeal found sufficiently demonstrated genuine use for some of the goods and services covered by the BIG MAC trademark. Plesner has previously reported on both cases, see here.
The General Court has now scrutinized the use of the BIG MAC trademark and in this third chapter of the case, one of the key issues has been whether use of the mark could be documented for "chicken sandwiches". As documentation, McDonald's submitted printouts of advertising posters and screenshots of TV commercials and social media profiles, all showing use of the BIG MAC trademark for chicken sandwiches.
In its decision, the General Court noted that, while McDonald's had provided evidence of the BIG MAC trademark actually being used for chicken sandwiches in France, McDonald's had not provided evidence supporting i) the extent of the use of the mark in the form of volume of sales, ii) the time period of use, and iii) the frequency of use. As such, the Court found that the Board of Appeal had erred in finding that McDonald's had provided sufficient evidence substantiating genuine use for "chicken sandwiches". The same conclusion was made with regards to "foods prepared from poultry products". Consequently, this part of the Board of Appeal's decision was reversed.
However, the General Court found that the documentation for use in relation to "foods prepared from meat products" and "edible sandwiches" was sufficient.
Finally, the General Court found that the use of the BIG MAC trademark for certain goods could not also constitute evidence for use in connection with class 42 services (services associated with, i.a., operating restaurants now placed in class 43). Thus, coverage for such services was lost. In this regard, the General Court, i.a., stated that the reputation of one trademark – McDonald's – cannot affect the assessment of the genuine use of another trademark. In this case being BIG MAC. Thus, the fact that McDonald's is well-known for restaurant services was not relevant for the assessment of whether use of the BIG MAC mark was sufficiently documented for said services.
Comments
The entire BIG MAC saga, including the latest decision from the General Court, provides valuable insights into the documentation required for showing genuine use of a trademark. One of the key take-aways is that all trademark owners and their advisors must remember to continuously gather documentation which demonstrates both the form and extent of trademark use.
Further, the BIG MAC saga should make trademark owners consider broader terms within the class descriptions, as it may provide more flexibility when it comes to providing proof of genuine use. This is of course a balancing act, as there is always the risk of applying for coverage of too broad class descriptions, which comes with its own challenges. There are nevertheless some strategic considerations to be made in this respect.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.