Old McDonald(s) had BigMac

Old McDonald(s) had BigMac

.. and it doesn’t own it any more.

No, it did not sell it to competition. And no, it did not proceed to a rebranding. And again no, it did not simply abandon it.

What happened instead is that the EUIPO Cancellation Division (hereinafter the “CD”) issued  a decision in the Supermac case, upholding Supermac’s application for revocation and revoking McDonalds – the EUTM proprietor – ‘s rights in the  BigMac trademark, for nothing less than… insufficient use. This is certainly the type of decision that would make Jamie Oliver and the vegan world throw a pantagruellic rucola party, but to be very honest, not even the fiercest enemies of fast food would have expected it.

When it comes to McDonalds, we are all tempted to believe that there is nothing more used and abused in terms of trademarks and branding. Cancellation for non-use? No, absolutely not, that happened to Mom’s registration of spinach wonder-cookies, which she neither sold nor advertised since I was five, but not to McDonalds. And if we are to think about potential threats to the famous brand, we may suspect their Happy Meal and McAlmost-anything-eatable to enter in the dictionaries rather than lacking genuine use.

However, it seems that at least from EUIPO’s perspective, BigMac is not big enough. Or, at least, not used enough.

The CD’s decision might have fallen like a bolt from the blue for the fast food giant, whom we might accuse of anything in the field of branding and advertising, except for negligence (although we may suspect that heads have fallen in the IP division or.. cough cough…elsewhere).

BigMac is certainly a symbol for McDonalds and it may be questionable that such a decision will really convince the IP world or even laymen regarding its grounds, or in the event of a favorable appeal decision, it will be soon forgotten.

It looks like the old banking principle too big to let fail, does not apply in IP. And if it’s true that there are indeed trademarks that literally became dictionary words, this was not the charge brought against BigMac.

As stated right from the beginning of the Summary of the Parties’ arguments, “the applicant argues that the EUTM was not put to genuine use during a continuous period of five years following the date of registration in relation to any of the registered goods and services. The applicant requests that the EUTM be revoked in its entirety with an earlier date, namely five years from the date of registration.”

Of course, McDonalds did not turn the other cheek, but filed evidence of use. Probably convincing, if you ask their representatives, insufficient, if you ask the CD. And, given that the CD was the one who judged the case, guess what happened?!

In the Grounds of the Decision, the CD kindly reminds us what the genuine use of a TM is, namely  - “the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services.” Until now, everything is as clear as daylight.

So, let’s see how McDonalds understood to defend one of its biggest IP fortresses, by analyzing the evidence submitted, as provided by the CD’s decision:

a.     

a.     3 affidavits, signed by representatives of McDonald’s companies in Germany, France and the United Kingdom claiming significant sales figures in relation to ‘Big Mac’ sandwiches for the period between 2011 and 2016

Now, without any bias, this sounds more like self-produced evidence. It is obvious that independent evidence does not mean exactly an affidavit from McDonalds ’representatives.  Therefore, in this respect, high-five for the CD’s conclusion – “As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence”.

b.     Brochures and printouts of advertising posters, in German, French and English, showing, inter alia, ‘Big Mac’ meat sandwiches; and packaging for sandwiches (boxes); the materials appear to originate from the EUTM proprietor and are dated between 2011 and 2016. The brochures and posters show a sandwich on the menu along with other products, or on its own, and the prices are also provided on some of the materials; other documents appear to be blank menus in which the price can be filled in. The EUTM appears on the submitted material in relation to sandwiches.

Houston, we’ve got a problem! Brochures and printouts of advertising posters should be a valid proof of use.  And generally, it is almost normal for these materials to originate from the EUTM’s proprietor (of course, as long as they have been effectively used during the relevant period and have not been designed and printed the night before submission).

Also, if we are to read this decision with a critical eye, we can a spot a gap of logical sequence: On the one hand, the Cancellation Division states that “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”. On the other hand, after having stated that all of the remaining evidence come from the EUTM proprietor, the CD strikes with “Part of the submitted evidence, that is, the printouts, originate from the internet.”  What is in fact, the point of revoking a TM for non-use other than sanctioning the proprietor for not being diligent enough to advertise it, market is, bring it in the consumer’s attention? Ok, we should not take the EUTM proprietor’s word for granted (which would be the case of affidavits), but it is a proof of diligence to have the products promoted on the internet.

c.     Printouts from the websites www.mcdonalds.de, www.mcdonalds.at, www.mcdonalds.be, www.mcdonalds.cz, www.mcdonalds.dk, www.mcdonalds.es, www.mcdonalds.fi, www.mcdonalds.fr, www.mcdonalds.hu, www.mcdonalds.ie, www.mcdonalds.it, www.mcdonalds.nl, www.mcdonalds.pl, www.mcdonalds.ro, www.mcdonalds.se, www.mcdonalds.si, www.mcdonalds.sk, www.mcdonalds.co.uk, dated between 07/01/2014 and 03/10/2016. They depict a variety of sandwiches, inter alia ‘Big Mac’ sandwiches, some of which state that they are sandwiches made with beef meat.

These are analysed in bulk by the CD. No particular explanation, just a sibylline formula according to which “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”.

The explanation does not do any good: “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”.

The fog becomes thicker. And now, let’s take some distance and analyse – McDonalds is not a high-class 3 Michelin Stars Fine-Dining-Cuisine restaurant. No! It is one of the giants in the fast-food industry. And if you want to eat fast, you do not enter the website, analyze the Menu and then eclectically spoil yourself with a BigMac and a fine wine. No, this is not how things work in real life (and fast food) – you just go around the corner and grab a BigMac or McSomething, and most of the times you do this because it is the fastest (and sometimes cheapest) solution to save you from starvation in no time. Does the traffic on the websites seems that significant in these conditions? It was a rhetorical question, of course.

d.     A printout from en.wikipedia.org, providing information on ‘Big Mac’ hamburger, its history, content and nutritional values in different countries.

Wikipedia is Wikipedia. And if Wikipedia mentions something, then this may be an indicator of the degree of knowledge the general public has on the subject. However, for the sake of justice, we should mention in the defense of the CD that we do not have information regarding the `age` of that Wikipedia page. If it was created 10 years ago, then they are right, it can hardly be considered evidence of use.

In any case, however biased this analysis might seem, I have to admit that the CD has a point: The methods and means of proving genuine use of a mark are unlimited. The finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that the EUTM proprietor chose to restrict the evidence submitted (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 46).

Remember what I was saying about heads falling? The EUTM proprietor chose to restrict the evidence submitted- this is the elevate and polite way of the CD to say: guys, you’re McDonalds, are you nuts? You could have brought so much more relevant evidence! Did the dog eat your evidence or what?!

Well, I owe my reader(s?) honesty. I was indeed outraged of the idea of BigMac being revoked for non- use. And I am still of the opinion that this was not one of the CD’s best days for science, but in the end, we are the architects of our own rise and/or fall; because in the IP world, before submitting does-not-matter-what-just-throw-there-something-‘cuz-we’re famous- evidence of use, one should submit it to a thorough analysis. It seems as McDonalds has just learnt from this embarrassing lesson, that no EUTM proprietor is too big to let fail.

And now, let the betting season for the appeal start. Bring your popcorn (or BigMac, upon the case) and let’s see what happens in front of the Board of Appeals.

PS: Special thanks to my special illustrator :)