CFI: Big Mac trademark partially revoked

The European Court has declared the Big Mac trademark, which has been protected as a European Union trademark since 1996, partially revoked. In a revocation application against the Big Mac trademark due to non-use of the trademark for certain goods and services, the European Court (CFI) ruled in favor of both parties - in part.

- In April 2017, the applicant, Supermac's Holding (Ireland), had filed a revocation application against MacDonalds' EU trademark Big Mac (based on Art. 51 (1) (a) of Regulation (EC) No. 207/2009)

- The Cancellation Division granted this application and declared the Big Mac mark revoked for non-use

- Mac Donalds lodged an appeal against this and was upheld: a Board of Appeal of the EUIPO annulled the decision of the Cancellation Division and Super Mac was again protected as an EU trade mark

Supermac's Holding brought an action against this decision of the Board of Appeal before the European Court of Justice - which has now been decided (CFI T 58/23, June 5, 2024).

Revocation application against the Big Mac union trademark

In principle, trademark owners can extend trademark protection as often as they like, theoretically forever. Nevertheless, even large well-known trademarks can be contested, as trademark protection is only granted if the trademark is actually used in a commercial environment - for the goods and services for which protection is claimed.

Trademark owners must therefore be able to provide evidence of such commercial use in order to obtain protection. Specifically, the present revocation application against the Big Mac trademark concerned the period of the last 5 years before the application was filed (April 2017).

Had the Big Mac trademark been used commercially in the European Union for goods and services in Nice Classes 30 (“Edible foodstuffs”), 29 (“Foodstuffs consisting of meat and poultry products”) and 42 (“Fast food restaurant services”, “Drive-through”)?

Mac Donald's submitted a variety of evidence from its commercial activities in France, printouts of advertising posters, screenshots of a television commercial broadcast in France in 2016 and screenshots of the Facebook account of McDonald's France from 2016, on which “Big Mac” was visible and also “Big Mac Chicken”.

Board of Appeal of the EUIPO ruled in favor of Mac Donalds

The Board of Appeal had recognized genuine use of the contested mark in connection with the services in question.

Big Mac - trademark protection in Nice class 42

The Board of Appeal had stated that, the intervener's trade mark MCDONALD's was well known for fast food restaurant services and for fast food products on the menu of fast food restaurants and, that BIG MAC, as one of the sub-brands of the intervener Mac Donalds, was well known to the general public as it was listed as an exclusive product of Mac Donalds.

Big Mac - trademark protection as “meat and chicken sandwiches”

The Board of Appeal held that the use of the contested mark Big Mac in connection with “meat and chicken sandwiches” was sufficient to maintain the registration of the mark for the somewhat broader category of “edible sandwiches” (Nice class 30). For example, the word 'edible' means 'edible, fit for consumption' and, since use of the mark at issue had been established for 'meat sandwiches' and 'chicken sandwiches', which are both edible and fit for consumption, use of the mark at issue had also been established for 'edible sandwiches'.

Similarly, it also assumed that use of the contested mark Big Mac had been proven for “foodstuffs prepared from poultry products” (Nice class 29), as these fell into the broader category of “foodstuffs prepared from poultry products”. Did this prove that the Big Mac mark had been used for “chicken sandwiches”, as the Board of Appeal had decided?

CFI: Big Mac trademark preserved in part

The CFI ruled in favor of both parties in part.

Mac Donalds had provided evidence of the commercial use of the Big Mac trademark as “edible sandwiches” in Nice Class 30, said the CFI. The use of the contested Big Mac mark was also proven for “foodstuffs prepared from meat products”, as these fell into the broader category of “foodstuffs prepared from meat products”, i.e. these goods form a homogeneous category. The European Court stated that this had been narrowly, but correctly, justified by the Board of Appeal.

In vain, the plaintiff argued that “meat sandwiches” and “chicken sandwiches” were wrongly registered in Classes 29 and 30, since according to the Nice Classification, all types of edible sandwiches, including meat or chicken sandwiches, belong to Class 30.
However, according to case-law, goods or services belonging to one class or category may also belong to another class or category (judgment of October 21, 2014, Szajner v OHIM - Forge de Laguiole (LAGUIOLE), T-453/11, EU:T:2014:901, paragraph 88).

CFI: Big Mac trademark declared partially revoked

Nevertheless, the CFI declared the Big Mac trademark partially revoked. The evidence submitted had not been able to prove the use of the trademark as “chicken sandwiches” (Nice Class 29) for the period in question, the CFI ruled. Although the evidence shows that the goods at issue were presented in France during the relevant period as part of advertising measures under the contested mark, there is no information on, in particular, the volume of sales, the duration of use of the mark and the frequency of use.

The CFI also found that the use of the Big Mac trademark for the services as a fast food restaurant had not been sufficiently proven. Mac Donalds submitted numerous pieces of evidence. However, none of this evidence relates to the services in question, even if they are understood as fast food restaurant services. They do not contain any reference to the existence of the services covered by the contested Big Mac mark. The mark Big Mac is used in this evidence only in connection with “meat sandwiches”.

According to the CFI, it is contrary to case law that the reputation of a mark for certain goods or services can influence the extent of use of another mark because the public can establish a link between those marks. The use of a mark cannot be established by probabilities or presumptions, but must be proven by solid and objective evidence.

The CFI declared the Big Mac trademark partially revoked. The decision of the Board of Appeal of the European Union Intellectual Property Office (EUIPO) of December 14, 2022 (Case R 543/2019-4) is annulled in part and amended accordingly:
Big Mac remains an EU trade mark, e.g. as 'meat sandwich' and for goods in Class 30, but is revoked in part as regards the goods 'chicken sandwiches' in Classes 29 and 30 and the goods ‘foods prepared from poultry products’ in Class 29 and 'services relating to the operation of restaurants and other establishments or facilities providing food and drink prepared for consumption and drive-through facilities; preparation of take-away meals' in Class 42.

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