Big Mac Blunder: McDonald’s Loses European Trademark Rights for Famous BurgerFebruary 14, 2019

Last month, the European Union Intellectual Property Office (EUIPO) issued a surprise decision revoking fast food giant, McDonald’s, “BIG MAC” EU trademark registration in its entirety. The decision was the latest development in an ongoing battle between McDonald’s and Irish fast food restaurant Supermac’s.

McDonald’s trouble started in 2014 after they opposed Supermac’s trademark application for “SUPERMAC’S”. McDonald’s alleged that registration of this mark would cause a likelihood of confusion among consumers, constitute unfair advantage, and detriment the distinctiveness or repute of numerous McDonald’s marks, including “BIG MAC”, which had been registered with the EUIPO since 1998. Ultimately, in 2016, the Opposition Division of the EUIPO ruled that the SUPERMAC’S mark must be rejected for all goods and services that were identical or similar to those offered by the various McDonald’s marks.

Supermac’s hit back at McDonald’s by filing a request for revocation of McDonald’s BIG MAC mark in 2017 (Cancellation No 14 788 C). Supermac’s alleged that McDonald’s had not put the BIG MAC mark to genuine use in the EU during a continuous period of five years following the date of registration in relation to any of the registered goods and services, as is required under EU trademark law.

To prove such use, McDonald’s submitted affidavits from McDonald’s representatives, brochures and printouts of advertising posters, printouts from McDonald’s websites, and a printout from Wikipedia. However, the Cancellation Division of the EUIPO determined this evidence was insufficient. The Cancellation Division concluded that, while the evidence exhibited the BIG MAC mark used in relation to some relevant goods, it did not give any data for the real commercial presence of the mark or otherwise prove the extent of its use, failing to establish things such as the place, time, or extent of any use. For instance, the Cancellation Division noted that the website materials showed use of the BIG MAC mark, but failed to show how often the websites were visited, the locations from which they were visited, or whether any orders were placed through the websites (or whether it was even possible to do so). Because of this, the Cancellation Division determined McDonald’s “has not proven genuine use of the [BIG MAC mark] for any of the goods and services for which it is registered” and canceled the mark in its entirety.

While this is a surprising result given the widespread popularity and commercial success of McDonald’s and its Big Mac burger, it serves as an important reminder for all trademark owners, whether big or small, to be diligent in the maintenance of their marks. For even something as big as the Big Mac is not immune from a loss of trademark rights.

Nicholas Krob is an Intellectual Property Attorney at McKee, Voorhees & Sease, PLC specializing in Trademarks, Litigation, and Licensing. For additional information please visit www.ipmvs.com or contact Nick directly via email at nicholas.krob@ipmvs.com.