The expiry of the right of proprietor of an EU trade mark shall be established on the basis of an application to the EUIPO or a mutual claim in infringement proceedings, where during a period of time five years, the trade mark was not actually used in the Union for the goods or services for which it was registered and there are no justified reasons for not using the mark.
Procedure for the expiry of the European Union trade mark
On 11 January 2019 The European Union Intellectual Property Office (EUIPO) has ruled on the continuation of the request made by Supermac’s (Holdings) Limited based in Galway, Ireland v McDonald’s International Property Company Limited based in Wilmington to revoke registration of the European Union trade mark ‘BIG MAC’ under the number 62,638 „BIG MAC’ (a word mark, hereinafter a trade mark or a trade mark of the European Union), which consequently means withdrawing the protection granted to a trade mark by declaring it to be void.
Supermac argued that the European Union trademark ‘BIG MAC’ was not actually used by McDonald’s on time 5 five years following registration of the European Union trade mark in relation to the scope of registration as a European Union trade mark. Since the European Union trade mark ‘BIG MAC’ has been registered 22 December 1998, and the request for repeal was lodged on 11 April 2017, In order to maintain protection of McDonald’s trademark, it was required to demonstrate during the period five the years preceding the application for revocation of the actual use of the trade mark.
The actual use of a trade mark shall occur where the trade mark is actually used on the market in a registered product and service. The actual use of a trade mark shall not constitute a symbolic use of the trade mark in order to preserve the rights conferred by the mark or use for internal use.
In the proceedings for waiving registration of a European Union trade mark, the proprietor of the mark (under this case McDonald’s) is the burden of demonstrating the place, time, scope and nature of the use of the trade mark. The conditions in question are cumulative, which means that the absence of one they make evidence of the remaining unnecessary.
Assessment of evidence
In its ruling on the case, the EUIPO concluded that the evidence submitted by McDonald’s was insufficient to demonstrate the actual use of the European Union trade mark ‘BIG MAC’ due to the lack of evidence of the scope of use of the trade mark.
First, The EUIPO indicated that the written submissions made by McDonald’s representatives to the fact that the number of sandwiches sold is insufficient, since as evidence from the interested party itself or its employees, they are in principle less evidence-weight than evidence from independent parties and thus their evidentiary value can only be assessed in the light of the other evidence.
EUIPO then pointed out that the printouts of McDonald’s websites show a significant nature of use, but it is not possible to establish a link between McDonald’s websites and the possible number of sandwiches offered or sold, where McDonald’s did not provide even a number of visits to the site or order documentation. However, the evidence submitted in the form of website prints does not allow to determine whether it was possible to purchase or order a sandwich via the website, which makes the conditions of time, place and scope of use still inadequate.
Similarly, EUIPO assessed McDonald’s brochures, packaging and printouts of promotional material. EUIPO stressed that McDonald’s did not provide evidence that these materials were distributed and led to the sale of sandwiches. As with the printing of websites, no evidence was submitted showing the number of sandwiches sold (although the number of packages consumed in connection with the sale of products).
With reference to the printouts from the website en.wikipedia.org containing information on the ‘Big Mac’ hamburger, its history, composition, nutritional value in various EUIPO countries, pointed out that Wikipedia entries should not be considered as a reliable source of information, as their content could be changed by Wikipedia users. They could only be considered relevant for resolving the case if they were reinforced by different independent and concrete evidence.
EUIPO settlement
Finally, the EUIPO decided that the evidence submitted by the proprietor of the trade mark does not justify the finding, without the use of presumptions or presumptions of likelihood of circumstances proving that the trade mark was actually used in connection with the products and services covered.
The evidence provided by McDonald’s in the EUIPO’s assessment proved insufficient to demonstrate the grounds for the scope of use of the trade mark, which is an essential element in proving genuine use. Since the grounds for the place, time, scope and character of the use of the trade mark are cumulative, the non-disclosure, though one they make evidence of the remaining unnecessary.
Consequently, the application to revoke registration of the European Union trade mark ‘BIG MAC’ under the number 62,638 „BIG MAC’ (a word mark) proved to be entirely legitimate and the contested trade mark lost its full protection.
Author:
Michał Skwarek – a solicitor in the Legal Department. Graduate of the Faculty of Law and Administration of the University of Warsaw