In the latest round of the “David and Goliath” trade mark dispute between Supermac’s (Holdings) Ltd (“Supermac’s”) and McDonald’s International Property Company, Ltd. (“McDonald’s”) before the EUIPO, McDonald’s came out on top.

Background

Supermac’s is a long-established Irish fast-food chain, with over 100 outlets in Ireland, dwarfed by the size of global fast-food giant McDonald’s, which boasts over 40,000 outlets worldwide.

The respective restaurants peaceably co-existed in Ireland from the late 1970s, until Supermac’s embarked on a European expansion plan. In 2016 and 2017, Supermac’s applied for EU Trade Mark Nos. 015442023 “SUPERMAC’S” and 016583379  

McDonald’s opposed these applications based on several earlier EUTMs, including No. 62638 “BIG MAC”, on the grounds of likelihood of confusion and reputation.

In an effort to retaliate in 2017, Supermac’s applied to cancel the “BIG MAC” trade mark on the basis of non-use.

In 2019, at first instance, the Cancellation Division revoked the “BIG MAC” trade mark for all goods and services, finding that the evidence failed to prove genuine use. The evidence was submitted in five annexes, which included three affidavits from McDonald’s employees/representatives, extracts from McDonald’s website and a Wikipedia extract.

Supermac’s capitalised on the victory as a PR opportunity and the story went viral with news outlets and IP commentators around the world.

Boards of Appeal

McDonald’s filed an appeal, submitting voluminous additional evidence in fourteen annexes, including consumer surveys, Google analytics data and copies of advertising material, menus and receipts.

Supermac’s argued against the admissibility of the additional evidence as it constituted a significant and substantial part of the overall evidence and did not merely strengthen and clarify the prior evidence but was entirely new.

However, the Board of Appeal determined that the additional evidence indeed only supplemented the evidence submitted at first instance. The Board of Appeal exercised its powers under Article 27(4) EUTMDR to accept facts and evidence submitted for the first time on appeal because it was considered to be “relevant to the outcome of the case”, and it could not be excluded that if it had been taken into account at first instance, then it may have affected the Cancellation Division’s assessment and its final conclusion.  

In assessing all of the evidence, the Board of Appeal found that it was sufficient to establish genuine use in relation to the following goods/services:

Class 29:  Foods prepared from meat and poultry products, meat sandwiches, chicken                      sandwiches.

Class 30:           Edible sandwiches, meat sandwiches, chicken sandwiches.

Class 42: Services rendered or associated with operating restaurants and other                                establishments or facilities engaged in providing food and drink prepared for consumption and for drive- through facilities; preparation of carry-out foods.

The Board of Appeal partially annulled the Cancellation Division’s decision. The opposition proceedings between McDonald’s and Supermac’s will be resumed.

Key “Takeaways”

The apparent strength of the “BIG MAC” trade mark is that it is widely recognised internationally. However, this dispute shows that a giant’s strength can be targeted and used against it. At first instance, the adroit moves of Supermac’s essentially tripped up the McDonald’s powerhouse, which sent shockwaves through the media.

Just because a trade mark is widely known, does not guarantee a finding of genuine use by the EUIPO, who cannot look outside of the evidence filed. Therefore, filing a sufficiency of well-presented evidence from the outset is highly recommended – even if it is only to support what appears to be a foregone conclusion!

In this respect, it is important, if not imperative, that all EUTM owners regularly collate evidence which demonstrates the time, place, extent and nature of the use of their trade marks. In the same way that documents are compiled for financial audits, trade marks may effectively be “audited” through non-use cancellation proceedings and the evidence submitted is crucial to maintaining registration. 

The Board of Appeal decision, conversely, is important in illustrating that a first instance decision is not a death-knell, and under certain conditions, additional evidence may be eligible for consideration under the provisions of Article 27(4) EUTMDR.