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The European Trademark Office Cancels McDonald's "Big Mac" Trademark

The European Trademark Office cancelled McDonald's European "Big Mac" trademark in its entirety after a legal challenge by the Irish restaurant chain Supermac's.

Supermac's, founded in 1978, has more than 100 restaurants in Ireland.  The Irish company is named after its founder who earned the nickname "Supermac" while playing football as a kid.  Supermac's wanted to expand into the rest of Europe, and though the company has a trademark in Ireland, it did not have a European trademark.  

In 2015, Supermac's filed for a European wide trademark, but it was objected to by McDonalds, McDonalds claiming that the branding of Supermac's was too similar to its "Big Mac" trademark.  You see - the "Big Mac" registration in Europe is both for food and restaurant services.  This meant that McDonalds could call a restaurant "Big Mac"and as a result of that, it was able to argue successfully that if the Supermac's name was successfully trademarked, it could cause confusion for consumers.  Of interest, in the 2015 dispute between the two companies, McDonalds introduced survey evidence.  

In 2017, Supermac's tried again, which led to a new objection from McDonald's.  In order to fight that ruling, Supermac's had to formally submit a request to the European Union Intellectual Property Office (EUIPO) to cancel McDonald's trademark for "Big Mac" in its entirety, arguing that it was not being put to genuine use. 

McDonald's lawyers provided website printouts, examples of advertisements and packaging, signed affidavits from three executives, and a Wikipedia page printout as evidence that it sells Big Macs in Europe.

The EUIPO ruled that "the evidence is insufficient to establish genuine use of the trademark."  In particular, they said that records from McDonald's employees were insufficient and not independent, and that Wikipedia pages are not reliable sources of information.  The ruling expressly said affidavits from the parties are "generally given less weight than independent evidence."  Basically, McDonald's evidence was self-serving.  Had McDonald's submitted survey evidence as they did in the 2015 dispute, the outcome might have been different.  Furthermore, all of McDonald's evidence referred to the food and none of the evidence referred to restaurant services(i.e. using "Big Mac" for restaurants and not just burgers).  McDonalds has of course appealed the ruling.

The judgment will allows Supermac's to file for its European trademark and finally expand into the rest of Europe.  The ruling also had the unintended consequence of allowing Supermac's to use the "big mac" trademark on any food for sale.  

There are several lessons to be learned from this ruling:

1.    Don't overreach when you file for trademarks, for example, including goods and services that you don't actually sell.  

2.    Know the evidentiary rules when you litigate.

3.    The big guys don't always win!

Susan L. Crockett, Esq.

By Crockett & Crockett of Crockett & Crockett posted on Monday, February 11, 2019.

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