Marques / Contrats

“Big Mac”: the verbal European trademark revoked for non-use!

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EUIPO, Cancellation division, decision n°14788C, Supermac’s Holding Ltd against Mc Donald’s International Property Company, Ltd

In a decision rendered on January 11th, 2019, the Cancellation Division of EUIPO held that the verbal European Union trademark “Big Mac” shall be revoked for non-use.

In order to prove genuine use, McDonald’s submitted the following evidence:

–          3 affidavits signed by representatives of McDonald’s companies in Germany, France and the UK which ascertained significant sales in relation to “Big Mac” sandwiches;

–          Brochures and printouts of advertising posters in German, French and English, showing “Big Mac” meat sandwiches and packaging for sandwiches;

–          Printouts from local McDonald’s’ websites in the European Union;

–          A printout from Wikipedia providing information on “Big Mac Hamburger, its history, content and nutritional values in different countries”.

The Cancellation Division found that these evidences were not sufficient to establish a genuine use of the EUTM. In particular, the EUIPO held that:

–          all these evidences originate from the EUTM proprietor itself;

–          “the mere presence of a trademark on a website is, of itself, insufficient to prove genuine use unless the website also shows the place, time and extent of use or unless this information is otherwise provided”. The Cancellation Division specified that “the value of internet extracts in terms of evidence can be strengthened by evidence that the specific website has been visited and, in particular, that orders for the relevant goods and services have been made through the website by a certain number of customers in the relevant period and in the relevant territory”. In this instance, McDonald’s did not submit any evidence showing that orders had been placed from these websites;

–          McDonald’s provided “no information about how these brochures were circulated”, and “there is no independent evidence submitted that could show how many of the products for which the packaging was used were actually offered for sale or sold”;

–          “Wikipedia entries cannot be considered as a reliable source of information, as they can be amended by Wikipedia’s users and therefore these could only be considered relevant as far as they are supported by other pieces of independent concrete evidence”.

Consequently, the Cancellation Division found that the submitted evidences “do not provide conclusive information that the products marked with the EUTM are offered for actual sale, as there is no confirmation of any transaction, either online, or via brick-and-mortar operations”.

This decision confirms that:

–          Evidence originating from the EUTM owner is an admissible means of proof but it must be supported by other evidence originating from independent sources;

–          if, according to the Cancellation division, “the methods and means of proving genuine use of a mark are unlimited”, the proprietor shall provide precise and reliable information regarding sales and turnover figures.

This decision may, at first glance, appear extremely surprising and severe given the fame of the trademark “Big Mac”, hence its interest. That said, it does not actually reflect a change in community case-law. For the sake of clarity and also perhaps to prevent any potential criticism, the Cancellation Division explained that its final conclusion “is due not to an excessively high standard of proof, but to the fact that the EUTM proprietor chose to restrict the evidence submitted”.

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