McDonald's has been in dispute with Supermac's, the largest Irish owned fast food restaurant in the Republic of Ireland, for a while now.
Earlier this year, McDonald's EU trade mark for one of its most famous and iconic burgers, the BIG MAC, was revoked for non-use following an application filed by Supermac's. For further information in relation to that decision see here.
McDonald's trade mark portfolio has once again come under the scrutiny of the EU Intellectual Property Office (EUIPO) at the hands of Supermac's. This time, Supermac's sought revocation of the "Mc" trade mark on the basis that the mark has not been used as a trade mark.
This is an interesting case as McDonald's obviously uses the term "Mc" as a prefix for other marks which forms a family of marks incorporating such a term, in very much the same way as easyGroup has the prefix "easy".
In this case, the EUIPO revoked the "Mc" mark in relation to certain goods and services but McDonalds were able to show use in relation to some goods where the term "Mc" was used with a descriptor such as "muffin".
Under the European trade mark regulations an EU trade mark will be revoked for non-use if, within a continuous period of 5 years, the trade mark has not been put to genuine use in the EU for the goods and services for which the mark is registered (or has been used in a form which alters the distinctive character of the mark) and there is no proper reason for non-use.
Supermac's made an application to revoke the "Mc" trade mark on the basis that the mark has not been used.
In response, McDonald's filed affidavits which included extracts from its websites across the EU and various documents including labels, packaging, marketing material and surveys in order to demonstrate that the "Mc" mark had been used. In particular, McDonald's provided evidence which detailed several signs which used the "Mc" prefix (for example McDonald's, McRib, McMuffin, McNuggets, McFlurry, amongst others). McDonald's also provided submissions in relation to seven other "Mc" prefixed signs: McCroissant, McMorning, McBaguette, McCurrywurst, McMenu, McCafe and Mc your own.
In its submissions, Supermac's argued that the mark "Mc" has never been used as a trade mark to designate the goods and services for which it was registered. They argued that McDonald's had filed the mark protectively to prevent third parties prefixing similar goods and services with the "Mc" mark. They further pointed out that "Mc" is a very common prefix to surnames which are used by pubs, hotels and in relation to food and drinks items and therefore prefixing with "Mc" does not guarantee origin. They further stated that the mark has low distinctiveness and lastly, that McDonald's have never used the term "Mc" by itself, it is always used in combination with another element e.g. McChicken Sandwich.
After assessing the evidence filed, the Cancellation Division of the EUIPO concluded that:
- The evidence submitted by McDonald's did relate to the relevant territory (the EU) and the relevant period of time.
- The evidence, albeit not particularly extensive, did demonstrate a certain scale of the use of 'BIG MAC' and "Mc" prefixed signs as highlighted above. However, in relation to some "Mc" prefixed signs the Cancellation Division concluded that the evidence provided was not sufficient to establish genuine use as they did not contain sufficient particulars as to the extent of use.
- There was no evidence of use of the mark "Mc" alone but only accompanied by further elements. Therefore, they had to consider whether the addition of other elements, such as sandwich, rib etc., altered the distinctiveness of the "Mc" mark. The Cancellation Division considered this in relation to "McDonald's" and a number of its core menu items. In relation to "McDonald's" and "Big Mac", the Cancellation Division concluded that the alteration of the mark from 'Mc' to its respective sign did alter the distinctive character of the mark. There was, however, a small selection of menu items which the Cancellation Division deemed did not alter the distinctive character of the mark and this was on the basis that those additional words had a clear and particular meaning with regards to the goods at issue, those goods being rib, muffin, toast, fish, wrap and nuggets.
- Some of the goods and services for which the "Mc" mark was registered covered a broad range of products for example, foods prepared from meat and poultry products in class 29 and the evidence submitted did not show use in relation to all such goods and services. Having assessed all the goods and services, the Cancellation Division deemed that McDonald's did not submit sufficient evidence in relation to classes 32 and 43 and therefore, the mark was revoked in its entirety in relation to these classes. The Cancellation Division did, however, hold that genuine use was shown for certain products only in class 29 and class 30.
Consequently, the trade mark was cancelled in relation to many goods and services except:
- chicken nuggets (Class 29); and
- edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches (Class 30).
This is another big blow for McDonald's in the same year the BIG MAC mark was revoked. Once again, this case demonstrates the importance of ensuring that trade marks are put to genuine use across all goods and services for which they are registered as well as ensuring that, when faced with a revocation action, detailed evidence is filed at the EUIPO in order to properly defend the action.