On January 11, 2019, the Cancellation Division of the European Union Intellectual Property Office (hereinafter referred to as "EUIPO") issued a decision revoking trademark No. 62.638 "BIG MAC" for non-use.
Although this decision is not definitive, and McDonald's International Property Company, Ltd. (hereinafter "McDonald's") - owner of such "BIG MAC" trademark - may appeal to the Board of Appeal of the EUIPO (and where appropriate, the dispute may continue before the General Court, and even the Court of Justice of the European Union), the decision issued by the EUIPO is of particular interest when preparing proof of genuine use of a trademark in revocation procedures.
The origin of the proceedings lies in an application for revocation for non-use of the mark BIG MAC filed by the fast food restaurant Supremac's. As a result, McDonald's had to prove to EUIPO that the EUTM BIG MAC - registered for goods and services in classes 29, 30 and 42 - had been put in genuine use in the territory of the European Union between 11 April 2012 and 10 April 2017.
In order to prove the genuine use, McDonald's provided the following documents:
- Three affidavits from McDonald's representatives in Germany, France and the United Kingdom (on sales turnover, promotional materials and sandwich packaging).
- Printouts of the different national McDonald's websites in the EU Member States where the "BIG MAC" sandwich is published.
- Printout of the information published in the Wikipedia® encyclopedia.
After analyzing the documents provided by the owner of the trademark, the EUIPO finds that they cannot prove the genuine use of the BIG MAC mark in the European Union. The decision is based on the grounds that the documents provided in the proceedings are insufficient to corroborate the information transcribed in the Affidavits, since they are documents drawn up by the right holder himself and therefore, fail to prove that the mark has actually been put in genuine use in the course of trade.
As far as affidavits are concerned, the EUIPO first reminds that they are admissible evidence, although they are less probative as they are documents drawn up by the parties. The Office also argues that the value of Affidavits will depend on whether the rest of the evidence provided allows the statements made in those certificates to be supported.
With regard to the impressions of McDonald's websites, the EUIPO points out that while they do demonstrate that the mark is on the internet, they do not evidence that the trademark has been put in genuine use. In this sense, the EUIPO states that for an internet impression to be taken into consideration for demonstrating the use of a trademark, it will be necessary to provide, for example, a sample of the visits received on these websites in a certain period of time, as well as the access made by consumers to the websites from the different EU Member States.
As regards the advertising brochures, the EUIPO asserts that McDonald's has not provided any evidence of their distribution to consumers, while the EUIPO states that the mere bringing of the packaging of the BIG MAC products to the procedure is not sufficient to prove genuine use, given that it does not report the products wrapped in that packaging which have been offered for sale.
Finally, the EUIPO does not deem the printing of the information offered by the Wikipedia® encyclopedia to be an unreliable source of information.
Despite this resolution, it should be noted that McDonald's has not lost all exclusivity on the BIG MAC trademark in the territory of the European Union, since there is another EU trademark that protects the same denomination, in addition to the different national registers in the different EU countries.
McDonald's will be expected to appeal this decision, seeking to complete the evidence provided before the Cancellation Division. The success of its defense will then depend on the admissibility of the new evidence by the Board of Appeal of EUIPO, which has the power to decide whether or not such new submission should be made (see Judgment of the Court (Grand Chamber) of 13 March 2007, Case C-29/05 P and Decision No R 282/2009-1 of the First Board of Appeal dated 9 June 2010).