This past January, the revocation of McDonald’s “BIG MAC” word EU trade mark for non-use was widely reported, both among IP aficionados (here, here, here and here) and in the media (here, here and here). The EUIPO decision (Cancellation No 14 788 C) can be read here.

A few days later, McDonald’s arch-rival Burger King temporarily renamed the sandwiches on the menu of its Swedish operation “Not Big Mac’s” (see the article on The Guardian, here). The opportunity for a poignant joke was evidently too juicy to be missed (it would appear that the video of Burger King’s Swedish stunt is not available on YouTube any longer, but you can still see it here).

Unsurprisingly, McDonald’s has recently filed an appeal against the EUIPO Cancellation Division’s decision (see here).

Waiting to see what the Boards of Appeal will eventually decide, the “BIG MAC” decision offers an interesting chance to discuss the role of evidence and of “well-known facts” in the assessment of (non-)use and reputation of trade marks in the EU.

The EUIPO decision

McDonald’s filed the “BIG MAC” word EU trade mark (No. 62638) for goods and services in classes 29, 30 and 42, which included “meat sandwiches“.

Supermac’s, an Irish burger chain, brought an application under Article 58(1)(a) of the EUTMR, requesting the revocation of “BIG MAC” in its entirety, arguing that the mark was not put to genuine use during a continuous period of five years in the EU. The application for revocation followed McDonald’s own opposition against an EU trade mark application for “SUPERMAC’S”.

In reply, McDonald’s provided the following evidence of genuine use:

• 3 affidavits signed by McDonald’s representatives claiming significant sales of “Big Mac” sandwiches in EU Member States;
• brochures and printouts of advertising posters, packaging and menus showing “Big Mac” sandwiches;
• printouts from McDonald’s official websites for many (18) EU Member States, depicting, among others, “Big Mac” sandwiches; and
• a printout from the English version of Wikipedia, providing information, nutritional values and history on the “Big Mac” sandwich.

Supermac’s argued that the evidence of use submitted by McDonald’s did not prove that the “BIG MAC” mark was put to genuine use “for anything other than sandwiches“, thus allowing that use for sandwiches would be proved.

However, the Cancellation Division found that the evidence submitted was insufficient to establish genuine use of the trade mark for all products and services. In particular, the Cancellation Division noted that:

• ex parte affidavits, although explicitly allowed as means of evidence before the EUIPO, are “generally given less weight than independent evidence“;
• practically all evidence submitted originated from the EUTM proprietor itself;
• the mere presence of a trade mark on a website is, of itself, insufficient to prove genuine use “unless it shows also the place, time and extent of use or unless this information is otherwise provided“;
• in this regard, the EUTM proprietor could have provided records of internet traffic, hits, or online orders; however, the printouts submitted carried “no information of a single order being placed“;
• Wikipedia entries cannot be considered a reliable source of information, as they can be amended by users and may be relevant only if supported by other pieces of evidence; and
• a declaration by the applicant itself concluding that the evidence submitted was sufficient to prove use of the trade mark in relation to some of the goods (i.e. sandwiches) could not have any effect on the Office’s findings.

On these grounds, the Cancellation Division revoked the “BIG MAC” trade mark in its entirety (including burgers).

A bitter pill (or “bite” as Italians would say) for the trade mark proprietor?

Following the publication of the decision, many comments highlighted how, although ostensibly strict, the Cancellation Division provided helpful guidance to trade mark proprietors on the kind of evidence that would be needed to show genuine use (here, here, here and here).

In the context of opposition or cancellation proceedings, it is quite common to rely, among others, on affidavits and printouts from company websites and online sources (such as Wikipedia) as evidence of use and reputation. However, the “Big Mac” decision suggests that this may be not enough.

It is most likely that McDonald’s will now try to submit additional evidence before the Board of Appeal, along the lines suggested in the cancellation decision. According to Art. 27 of the EUTMDR, this could be allowed since: “the Board of Appeal may accept facts or evidence submitted for the first time before it” provided that “they are, on the face of it, likely to be relevant for the outcome of the case; and […] they are merely supplementing relevant facts and evidence which had already been submitted in due time“.

In any case, leaving aside the inherent limits of the evidence submitted by the trade mark proprietor, the outcome of the “BIG MAC” decision seems somewhat counter-intuitive.

After all, Big Mac is one of (if not “the”) signature sandwiches of the largest restaurant chain in the world, and it has been sold continuously for the past fifty years (WARNING: these are Wikipedia facts!). Big Mac is such a globally wide-spread product that, in the late 80’s, The Economist developed the “Big Mac index” using the different local prices of the sandwich to measure buying power and currency misalignments across the world. The “Big Mac index” has been used and updated for more than 30 years (for more Burgernomics, see here).

One may thus wonder: how can such a “famous” trade mark be legitimately revoked because of insufficient evidence of genuine use, at least in relation to some of the goods and services (notably: hamburger sandwiches!)?

Perhaps, the doctrine of “well-known facts” (in Italian, the so-called “fatti notori“) could (or should) have played a bigger role in the reasoning of the Cancellation Division. In fact, the CJEU case law on trade marks suggests that well-known facts can be taken into account when assessing elements such as reputation, likelihood of confusion and distinctiveness.

For instance, in the Picasso/Picaro case, the General Court argued that “the restriction of the factual basis of the examination by the Board of Appeal does not preclude it from taking into consideration, in addition to the facts expressly put forward by the parties to the opposition proceedings, facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources. […] Article 74(1) of Regulation No 40/94 cannot have the purpose of compelling the opposition division or Board of Appeal consciously to adopt a decision on the basis of factual hypotheses which are manifestly incomplete or contrary to reality. Nor is it intended to require the parties to opposition proceedings to put forward before OHIM every well-known fact which might possibly be relevant to the decision to be adopted” (T-185/02, 22 June 2004, Claude Ruiz-Picasso and Others/OHIM; see also T-623/11, 9 April 2014, Pico Food GmbH/Bogumił Sobieraj, § 19).

Along the same lines, the General Court more recently allowed that “where the Board of Appeal finds that the mark applied for is not intrinsically distinctive, it may base its analysis on well-known facts, namely facts resulting from the generally acquired practical experience of marketing products of wide consumption, which facts are likely to be known to any person” (T-618/14, 29 June 2015, Grupo Bimbo, SAB de CV/OHIM, free translation from Spanish).

In Italy, this principle is enshrined in Art. 115(2) of the Code of Civil Procedure, which provides that “the judge may, without the need for proof, base its decision on facts which are part of the common knowledge“.

And, when considering the distinctiveness of Apple’s device trademark in the context of opposition proceedings, the same Italian Patent and Trademark Office (“IPTO”) argued that “although on the basis of the evidence on file it is not possible to assess the percentage of the relevant public which purchases the products and services distinguished by the […] trade mark […] the [reputation of the] trade mark consisting in the representation of an apple bitten on the right side belongs to the category of well-known facts” (IPTO decision 193/2016 of 20 May 2016, in the opposition No. 1083/2013, BITTEN APPLE WITH LEAF/BITTEN PEAR WITH LEAF, §§33-34, here; see also IPTO decision 340/2017 of 21 September 2017, in the opposition No. 959/2014, AppleFace, §§ 30-31, here).

A similar stance was taken also in relation to the “DECATHLON PLAY MORE PAY LESS” trade mark, whose reputation was held to be “in the public domain, so it does not need a specific burden of proof on behalf of the opponent” (IPTO decision 40/2015 of 10 February 2015, DECATHLON PLAY MORE PAY LESS/DECATHLON ITALY; on the IPTO practice on well-known facts, please refer also to the comments on the SPRINT portal by Prof. Stefano Sandri: here, here and here, all in Italian).

Of course, this is not to suggest that the burden of proof of genuine use should be lifted entirely when the trade mark at stake is so-to-say “famous”. However, in the assessment of the evidence on trade mark aspects such as genuine use or reputation, administrative bodies and courts should take into account the facts that “are likely to be known by anyone or which may be learnt from generally accessible sources“. Amongst these – it could be argued – one may count the continuous use of the “BIG MAC” word trade mark in relation to (at least) sandwiches in the EU. And this especially in a case where the applicant of the revocation action itself acknowledged that the trade mark was genuinely used in relation to these goods.

Finally, on the relevance of written statements and affidavits before the EUIPO, we note that Art. 97(1)(f) of the EUTMR, provides that “in any proceedings before the Office, the means of giving or obtaining evidence shall include […] statements in writing sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up“. This provision implies that the admissibility, the formal requirements and the probative value of written statements and affidavits are tied to the law of the country where they were drawn up. To take into account the different approaches, a study on the regimes on written statements in several EU Member States was commissioned by the EUIPO and can be found here.

Giovanni Trabucco

EUIPO Cancellation Division, Cancellation No. 14 788 C, Supermac’s (Holdings) Ltd vs. McDonald’s International Property Company, Ltd., 11 January 2019