Italy: BIG MAC vs. SUPERMAC'S: A Burger Battle

Anyone has tried, at least once in their life, the very famous Big Mac burger. The revocation for non-use of one of the well-known burger trademarks is currently before the European Union trademark Court following an appeal against the decision of the Board of Appeal of the EUIPO.

• A little background...

The Big Mac was conceived in 1967 by Jim Delligatti, franchise owner of one of the many restaurants of the well-known McDonald's fast-food chain in Pennsylvania, but at the time that was not its name. Originally, in fact, it was called "Aristocrat", and it used to be made only with those ingredients available in its kitchens; however, the costumers did not seem to like the name, and for this reason it was renamed "Blue Ribbon Burger"; but again, the name failed to catch the public. It was only during the following year, thanks to the idea of Esther Glickstein Rose, a secretary of the company administration, that the sandwich managed to reach the success as it is known all over the world nowadays: the "Big Mac"!

(Copyright © 2023 McDonald's. All rights reserved)

• Super vs Big

The dispute began in 2014 when the company Supermac's (Holdings) Ltd filed a first trademark application at EUIPO for "SUPERMAC'S" in class 30 and, subsequently, in 2016 other two applications both for the same wordmark and for the figurative one in the additional class 43. The McDonald's International Property Company, Ltd. opposes their concession, claiming that there is a likelihood of confusion among the public between the trademarks at issue (Article 8, paragraph 1, letter b RMUE) and that the unjustified use of the contested trademarks could take unfair advantage of the distinctive character or reputation from the earlier trademark or cause damage to it (art.8, paragraph 5 RMEU).

Anyways, whilst the 2014 trademark application was successfully registered, the opposition proceedings brought against the concession of the other two trademark applications filed in 2016 were suspended, as on April 11^th, 2017, Supermac's (Holdings) Ltd brought an action for revocation against the "BIG MAC" trademark (EUTM n. 62638) before the EUIPO for non-use by the proprietor for a continuous period of five years in relation to the goods and services for which it was registered, pursuant to art. 58, paragraph 1, lett. a) EUTMR.

On January 11^th, 2019¹, the Cancellation Division declared the revocation of the "BIG MAC" trademark, stating that there was an insufficient and unsuitable evidence of use of the trademark filed by McDonald's on the basis of the following reasons.

Firstly, the three affidavits of the representatives of McDonald's Germany, France and the United Kingdom², attesting a significant sales turnover of "Big Mac" sandwiches in the period 2011-2016, although admissible, are to be considered – according to the Division – in terms of a lower value of the probative aspect, since they come from the interested party, who, as such, has a perception more or less influenced by their own interests. These, therefore, must be evaluated in the light of further evidence, bearing in mind that, on the basis of the principle of interdependence, all factors such as the nature of the goods and services, the characteristics of the reference market and of the territory, the business turnover, the duration and frequency of use must be taken into consideration.

The brochures and billboards in German, French and English (2011-2016) depicting, among the other products, the "Big Mac" sandwiches and their packaging, do not provide any indication on how the documents circulated, who the recipients are, and whether they brought to any actual or potential product sales.

On the other hand, the prints of photographs alone depicting the "Big Mac" sandwiches, taken from the numerous websites that the company itself uses in each European country, are not sufficient to prove the genuine use, unless the website also shows the place, time and extent of use, or that such information is provided otherwise. In fact, it has been highlighted that the value of a website can be strengthened by evidence relating to the internet traffic and the number of orders placed by consumers in a certain period and in a specific territory, all elements that were not provided by McDonald's.

Finally, regarding the extract from the en.wikipedia.org website on the "Big Mac" hamburger, its history and nutritional values in the different countries (https://en.wikipedia.org/wiki/Big_Mac), the Division highlights that this online encyclopedia cannot be considered a reliable source, because the contents can be modified by any user and, therefore, it can only be considered relevant as such, if it is supported by further independent and concrete evidence.

The Applicant further argued that the above-mentioned evidence was insufficient to demonstrate the genuine use of the trademark for goods and services other than sandwiches and, in this regard, McDonald's stated that "the use of the trademark for the sandwich can be considered as "use" also for its ingredients" and, in any case, if the evidence had been considered insufficient for all the goods and services, the request for revocation should have been at least partially rejected.

Therefore, The Cancellation Division concluded that the evidence provided by McDonald's was not sufficient to demonstrate that the trademark had actually been used in the territory of reference (European Union) in the relevant period of time, because the documentation did not prove that the products with the "Big Mac" trademark were actually offered for sale, thus lacking the confirmation of any commercial transaction and time stamps. The time- place- extent- nature factors of use must be considered as cumulative, and therefore the evidence should have provided sufficient indications of all these factors in order to demonstrate the actual use; hence, the lack of one of these elements implies the rejection of the proof of use, as it is considered insufficient.

Supermac's request was accepted and the rights of the owner for the EUTM trademark n.62638 "BIGMAC" were entirely withdrawn as of April 11^th, 2017 (date of the application for revocation), together with the charge of the legal expenses to McDonald's.

• McDonald's does not give up.

On March 8^th, 2019, McDonald's contested the decision of the Cancellation Division by filing an appeal and integrating the documentation of use with the request, pursuant to art. 114 co.4 EUTMR, that some of these documents must have remained confidential, thus expressing a specific interest in confidentiality, as they contained market shares, advertising costs and turnover and/or sales data relating to the products.

Supermac's highlighted the lateness of the evidence provided as it could be supporting material aimed at clarifying the documentation that had already been provided previously; moreover, it highlighted, anyway, that even if admitted, those proofs would demonstrate a partial use, i.e., only in relation to part of the goods (hamburgers) and services.

The Fourth Board of Appeal declared the action brought by the owner of the EU trademark "BIG MAC" to be founded, albeit partially, observing that, with regards to the alleged lateness of the evidence, the Commission can discretionally accept facts/evidence produced for the first time before it, in case the documentation were relevant for the purposes of the proceeding and the lateness could be justified by valid reasons (art. 27, paragraph 4, EUTMDR³).

In light of the above, the Commission establishes that the Affidavits can neither be ignored nor merely considered as internal documents originating from the EUTM owner, because, in order to ascertain their validity as evidence, it is crucial to verify the plausibility and truthfulness of the information contained therein. In the present case, such audits were corroborated by the filing of further valid evidence, such as evidence of sales, advertisement and use of the services, adding that "it would be unreasonable, extremely rigorous and economically burdensome to require the owner of the trademark to keep market surveys for the entire period of validity of the trademark". Moreover, the Commission states that even before the United Kingdom definitively left the European Union, the use of the trademark in that country is to be considered as valid for the purposes of proof of use.

Furthermore, the Wikipedia extract contains many references and external links, including references to reliable sources such as articles in journals and well-known magazines, and therefore its evidential value cannot be denied.

In addition, the Commission, among the other issues in the field of the reasons for which the evidence had been provided, highlights that the "Big Mac" product is widespread and macro-economically significant enough to be used as a benchmark for comparing the cost of living in different countries, the so-called "Big Mac Index"⁴, and that various advertising materials confirm that "Big Mac" is being promoted as an integral part of restaurant services.

Contrary to what was previously claimed, therefore, the evidence presented shows that not only was the European Union Trademark "BIG MAC" used to identify a specific sandwich (made as follows: bun sandwich, Big Mac sauce, dehydrated chopped onion, chopped Iceberg lettuce, slice of Cheddar cheese, two beef burgers and two slices of gherkins), but also to promote the food supplier. In particular, the Commission states that "the "Big Mac" sandwich cannot be purchased in any other restaurant except in the establishments of the EUTM holder" (McDonald's).

To conclude, McDonald's does have shown the use of its "BIG MAC" word mark, but only for some of the products and services for which it had been registered⁵; consequently, the appeal⁶ was partially accepted, with the simultaneous annulment of the previous decision and with the compensation of costs for each party in both proceedings.

• The last word is yet to be said

In fact, on February 9^th, 2023, Supermac's appealed against the decision of the Fourth Board before the EU Court (Case T-58/23). Therefore, there will be the opportunity to find out the fate of the EU registration for the "BIG MAC" trademark and the related suspended opposition proceedings in relation to the "Supermac's" trademark.

(Copyright © 2023 McDonald's. All rights reserved)

Footnotes

1. EUIPO – Cancellation No 14 788 C (revocation).

2. Germany, France and the United Kingdom are considered as the representative countries of three of the most important economies of the European market and, for this reason, are considered by the owner of the EUTM capable of demonstrating by themselves the trademark use throughout the whole European Union.

3. "[...] In accordance with Article 95(2) of Regulation (EU) 2017/1001, the Board of Appeal may accept facts or evidence presented for the first time before it if and only if those facts or evidence meet the following conditions:
a) on initial examination, they may be relevant to the outcome of the case; and
b) they have not been presented in time for any good reason, in particular if they merely supplement relevant facts and evidence which had already been presented in time, or which are filed to contest already made assessments, or which have been examined ex officio by the Court of First Instance in the decision subject to the appeal".

4. Term coined by The Economist magazine.

5. Class 29 "Meat, pork, fish and poultry food; meat-based sandwiches; chicken meat-based sandwiches".
Class 30 "Sandwiches; meat-based sandwiches; chicken meat-based sandwiches".
Class 42 "Services provided by restaurants or relating to the management and franchising of restaurants and other establishments or structures intended for the supply and consumption of food and drinks and for drive-in establishments; preparation of takeaway food.

6. Decision of the Fourth Board of Appeal dated 12/14/2022 – Case R 543/2019-4 – McDonald's International Property Company, Ltd. VS Supermac's (Holdings) Ltd

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.