To many, this may have come as a surprise, as Big Mac is one of the world’s most famous type of burgers. The EU has been an important market for McDonald’s for decades. Most European burger eaters will be familiar with the Big Mac product and its connotations. Indeed, even the Economist uses the Big Mac to publish its yearly “Big Mac Index”, which is an indicator on currency levels based on the theory of purchasing-power parity.
So why would the EUIPO cancel the trademark? The answer squarely relates to the evidence, or rather lack thereof, which McDonald’s submitted to establish genuine use. Genuine use of a trademark exists where 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. The decision should serve as a strong warning to trademark holders to avoid taking the documentation requirements too lightly.
In revocation proceedings, the burden of proof lies with the trademark holder (or proprietor) to prove genuine use. This is because revocation applicants do not have any practical way of proving the negative fact of failure to use the mark in commerce.
McDonald’s, as the trademark holder, had to prove genuine use of the trademark during a five-year period preceding the date of the revocation request, which was filed on 11 April 2017. In accordance with EUTMDR Article 19(1), in conjunction with Article 10(3), McDonald’s had to establish the place, time, extent and nature of the contested trademark for the goods and services for which it was registered. These factors are cumulative, meaning that the trademark holder must provide sufficient proof of all of these factors to prove genuine use. As evidence of genuine use, McDonald’s submitted three affidavits signed by representatives of McDonald’s companies, along with brochures and printouts of advertising posters, printouts from its own websites, and a printout from Wikipedia.org. After examining the abovementioned materials, the Cancellation Division of EUIPO found the evidence insufficient to establish genuine use of the trademark.
Although written statements are expressly mentioned in EUTMR Article 97(1)(f) as a means of evidence, EUIPO clarifies that statements drawn by the interested parties themselves or their employees are generally given less weight than independent evidence.
The bulk of the evidence (except the Wikipedia printout) originated from the trademark holder itself, such as printouts form the McDonalds websites, promotional brochures and packaging. EUIPO states that the value of internet extracts in terms of evidence can be strengthened by evidence of website traffic, and that orders for the relevant goods and services has been made through the website in the relevant period and in the relevant territory. McDonald’s failed to provide such evidence. McDonalds did not provide information regarding any orders placed, EUIPO could therefore not establish a connection between the websites and any items offered or sold. EUIPO received no evidence that the packaging materials and brochures provided by McDonalds had circulated and had led to any potential or actual purchases. Furthermore, EUIPO specified that it does not consider Wikipedia as a reliable source of information, unless supported by other pieces of independent concrete evidence.
The Cancellation Division found it necessary to clarify that that it was unable to find genuine use without resorting to probabilities and presumptions. The Cancellation Division even went so far as to specify McDonald’s failure was not due to any particularly rigorous standard of proof, but rather that McDonald’s , by its own inaction, failed to submit the necessary evidence.
It is likely that McDonalds will be able to provide sufficient evidence in an appeal and have the decision overturned in subsequent proceedings.
Although proving genuine use is not subject to an excessively high standard of proof, trademark holders must keep in mind that the factors of time, place, extent and nature of use are cumulative, and that they must be able to provide evidence of all of these factors to prove genuine use. Failure to fulfil one of the abovementioned conditions increases the likelihood of EUIPO rejection.
The decision shows the importance of always putting in the sufficient effort in collecting and disseminating evidence regarding each of the criteria making the basis of the genuine use requirement. The decision also shows the insufficiency of merely providing a Wikipedia article as a primary source of evidence. That is not to say that internet extracts cannot be relevant. The relevance of such evidence depends, however, on the submission of supportive evidence, such as website traffic and purchases statistics in the preceding five years.