This decision from the Cancellation Division of the EUIPO dated 11th of January 2019 has already acquired a certain notoriety.
One would be tempted to say the same about the object of the decision, that is to say the famous BIG MAC from McDonald’s.
But that’s just an a priori, let’s take a closer look….
In the present case, the Irish company Supermac’s Holdings Ltd. requested the revocation in its entirety of the European Union Trademark Registration “BIG MAC” owned by McDonald’s International Property Company Ltd protecting namely the sandwiches of the same name and services associated with operating and franchising restaurants.
The applicant argued that the EUTM BIG MAC 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. A statement that, as we said, seems hardly credible at first glance, and somehow daring coming from a small company like Supermac’s. Nonetheless….
In response McDonald’s claimed in particular that “as commonly known and attested to in the affidavits” millions of products were sold under the trademark BIG MAC.
The actual evidence of use that was submitted by the EUTM owner comprised notably several affidavits signed by representatives of McDonald’s claiming significant sales figures during the relevant period; brochures and printouts of advertising posters, as well as packaging; printouts from the different websites of the company and from Wikipedia.
The overall assessment of the Cancellation Division of the EUIPO having analysed all pieces of evidence produced was categorical, it declared the evidence as “insufficient to establish genuine use of the trade mark”. An affidavit drawn up and signed by the interested party itself is obviously not an independent piece of evidence. The mere presence of a trademark on a website is not sufficient. And, a Wikipedia article does not constitute “a reliable source of information”.
According to the EUIPO the documents provided “do not give any data for the real commercial presence of the EUTM for any of the relevant goods or services”. In other words, no figures about actual sales were provided.
Do not get the EUIPO wrong. An affidavit can perfectly be provided in such proceedings as proof, but it must be backed up by actual independent pieces of evidence, such as hard sales figures. The presence of a trademark on a website can be an indication of use, but the trademark owner must also demonstrate the place, time and extent of use (number of visits to the website, numbers of orders processed through the website by a certain number of customers, records of the internet traffic and hits attained, countries from which the web page has been accessed).
It is essential to draw the attention to the fact that in this kind of proceedings the burden of proof lies with the EUTM trademark owner and not with the applicant of a request for revocation, since it is practically impossible to prove a negative fact.
Providing evidence of use is a procedural matter that is to be taken seriously and to be carried out meticulously. The EUIPO guidelines provide a high number of technical details regarding the presentation of the evidence to be submitted and the requirements as to the nature of use, its place, time and extent.
If the requirements are not strictly complied with, trademarks owners may face bad surprises, as did McDonald’s in the present case. Nothing is taken for granted. The presumably well-known character of a trademark in itself is not enough to prove use. As they say, pride goes before a fall.
The present decision from the EUIPO’s Cancellation Division can be appealed within two months from the notification of the decision, that is to say by March 11th, 2019. The EUIPO stated in its decision that genuine use was not proven, due to the “fact that the EUTM proprietor chose to restrict the evidence submitted”. In a way this sounds like an invitation to the trademark owner to file an appeal and to make sure to get the evidence right this time.
As you can see, this burger battle is far from being over. Let’s wait and see how much tastier it can get. To be continued.
In the meantime, there are important lessons to be learned:
- Trademark owners should never rely on the supposedly well-known character of their trademark, since assumptions and affirmations are not sufficient evidence of use.
- Trademark owners should constitute a complete and well-organised file containing evidence of an extensive and genuine use of their trademarks for all goods and services designated as early as possible (organized by date, territory, products and services concerned etc.)
- At the moment of a new trademark filing, trademark owners or their representatives should insofar as possible fine-tune the list of designated goods and services and adapt it to the projected use of the trademark in commerce.