Kerry Underwood

MCDONALD’S LOSES ‘BIG MAC’ TRADE MARK

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Kerry Underwood offers consultancy services in relation to this and other matters and details are here.

In

Supermac’s (Holdings) Ltd v McDonald’s International Property Company Ltd, 11 January 2019

the European Union Intellectual Property Office revoked McDonald’s Big Mac trade mark for lack of genuine use over a five year period.

Supermac applied under Article 58(1)(a) of the EU trade mark regulations for revocation on the ground that the mark had not been put to genuine use for five years.

McDonald’s said that the mark was genuinely used in Germany, France and the United Kingdom, all currently members of the European Union.

In revocation proceedings on grounds of non-use, the burden is on the trade mark owner and not the applicant, that is the trade mark holder must prove use.

The applicant is not required to prove the negative of non-use.

McDonald’s submitted evidence by way of brochures and printouts of advertising posters, together with printouts from its own websites, and, bizarrely lawyers may think, from Wikipedia.

The Cancellation Division held that this evidence was  insufficient.

McDonald’s had failed to provide third-party evidence and the brochures did not provide details of how they were circulated and whether they had led to any purchases.

In relation to the Wikipedia entry, the Cancellation Division noted that anyone can amend a Wikipedia entry.

Genuine use requires actual use and does not include token use for the purpose of preserving the trade mark.

As well as the evidence above, McDonald’s filed Affidavit evidence from representatives in Germany, France and the United Kingdom.

The Cancellation Division had this to say:

“The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

It is noted that all of the remaining evidence (the Affidavits having been already analysed above) originates from the EUTM proprietor itself, this includes the printouts from the proprietor’s own websites, promotional brochures and packaging. Part of the submitted evidence, that is, the printouts, originate from the internet. The standard applied when assessing evidence in the form of printouts from the internet is no stricter than when evaluating other forms of evidence. Consequently, the presence of the trade mark on websites can show, inter alia, the nature of its use or the fact the products or services bearing the mark have been offered to the public. However, the mere presence of a trade mark on a website is, of itself, insufficient to prove genuine use unless the website also shows the place, time and extent of use or unless this information is otherwise provided.

In particular, the value of the internet extracts in terms of evidence can be strengthened by evidence that the specific website has been visited and, in particular, that orders for the relevant goods and services have been made through the website by a certain number of customers in the relevant period and in the relevant territory. For instance, useful evidence in this regard could be records that are generally kept when operating.”

Comment    

A curious decision.

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Written by kerryunderwood

January 23, 2019 at 9:47 am

Posted in Uncategorized

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