On January 11, 2019 the Cancellation Division of EUIPO, the European Union Intellectual Property Office, decided to revoke the European Trademark registration 62 638 BIG MAC (wordmark) due to lack of genuine use. Will McDonald´s have a chance to succeed if they appeal the decision? We have analysed the decision and present you with 10 guidelines for successfully proving genuine use before the Cancellation Division.
10 guidelines for successfully proving genuine use before the Cancellation Division
To the average citizen, BIG MAC, the No 1 symbol of benchmarking the costs of living in different countries, often called “the Hamburger index” is a very well-known trade mark for McDonalds, used for a special type of hamburger, “sandwich” in formal EUIPO language, with a specific mix of ingredients. However, as for all registered trademarks, proof of genuine use has to be established if the mark was registered more than five years ago and someone applies for a revocation of the registration. This happened to McDonald´s when the Irish restaurant Supermac´s filed such an appeal as part of a legal dispute between the parties. This decision is particularly interesting because the Cancellation Office has made very clear statements, not only on what is insufficient, as was the case, but on what would be sufficient, and hopefully supplemented in the appeal.
McDonald´s presented three affidavits claiming significant use in Germany, France and the UK, by McDonald´s considered as the most dominating markets in Europe and therefore representative for use in Europe. The Cancellation Office did not share this opinion but stated the following on what could be sufficient proof.
- Affidavits written by the persons or companies making the statement have a higher probative value than affidavits written by one of the parties for someone else to sign
- Affidavits have a higher probative value if they are supported by other types of evidence or evidence originating from independent sources
- The content of the affidavit has to be supported by the other items of evidence
BROCHURES & OTHER MARKETING MATERIAL
Naturally, the marketing material presented has to refer to the relevant period of time, show use in the member states of the European Union and refer to at least some of the relevant goods or services. McDonald´s filed a lot of marketing material in German, French and English. Since there are a few more languages spoken in Europe they did not fully pass the test on the following point.
- The presence of a trademark on marketing material can show that the goods or services have been offered to the public. But, unless providing information on the place, time and extent of use, insufficient
- Just submitting packaging materials and brochures will not be sufficient to prove genuine use unless supplemented with information on how the material was circulated, who it was offered to, how many of the packages and brochures were used and if they were actually offered for sale – and sold
WEBSITES IN DIFFERENT COUNTRIES
Obviously, the Cancellation Division thinks that the tolls of modern technology has to be applied if the evidence refers to digital information.
- Printouts from the Internet might be used as evidence since here is no stricter standard than for other forms of evidence when assessing and evaluating printouts
- Such material has to be accompanied with specific information showing that the web sites have been visited, for instance by shoving records of Internet traffic and hits from different point of time during the relevant period
- It is also important to show from which countries the web site has been visited
WIKIPEDIA AS A RELIABLE SOURCE
Since Wikipedia is constructed for anyone to publish information on different issues, and the information available on Wikipedia for a short while can be adapted for creating proof of use, this source is per se disputable.
- Printouts from Wikipedia are only considered reliable evidence if they are supported by other concrete evidence
- Such concrete and supporting evidence have to comprise information on the extent of use sufficient to meet the requirements for genuine use
The appeal is due on March 1, 2019. We are looking forward to seeing to what extent McDonald´s will apply to the guidelines set out above by the Cancellation Division.
By Lars Thyresson
Senior Partner, CEO, Attorney at law. Lars is one of the founders of the company. He has worked with the Swedish Patent Office and major IP firms. Lars is authorized before the EUIPO as a trademark and design attorney and he has a vast experience in strategic discussions and international trademark prosecution and litigation. Lars is the chairman of the Swedish branch of FICPI, the International Federation of Intellectual Property Attorneys.