Q: When is a Big Mac not a Big Mac? A: When a patent office says so.
Last January the European Union Intellectual Property Office (the ‘EUIPO’) delivered a surprising ruling. Supermacs had originally filed a revocation order with them, requesting that they revoke McDonald’s ‘Big Mac’ trademark in Europe. Previously McDonald’s had stalled Supermacs efforts to extend its own ‘Supermacs’ trademark into the UK and Europe, pointing out that there was likely to be confusion between the very similar restaurant names. Originally McDonald’s had gained their Big Mac trademark in the EU in 1996. They have been notoriously litigious about protecting its trademarks. In 1993 it won a court order against a dentist in New York who had named his practice ‘McDental’. A similar case against a Singapore company in 2016 resulted in an order preventing them from trademarking ‘MacCoffee’ in the EU. This makes this recent loss all the more surprising.
EU regulations states that a patent can be revoked for three possible reasons. Firstly, the mark has become generic eg ‘escalator’ and ‘aspirin’ were originally brand names but aren’t any more due to everyday usage. Secondly, the mark could be liable to mislead the public. Finally, the trademark holder has not put the trademark to genuine use for the past five years. The genuine use must be in the EU. McDonald’s in the proceedings against Supermacs attempted to prove genuine use by submitting copious pieces of evidence, including 3 affidavits from employees in Germany, France, and the UK, brochures advertising the Big Mac in franchises across the EU, and printouts from the Internet, which even included the Wikipedia entry for Big Macs.
Despite this array of evidence, the EUIPO found that McDonald’s had not proven genuine use. The main issue seemed to be that a lot of the evidence originated from McDonald’s themselves. The EUIPO observed that, while they applied no different standard to evidence derived from the internet, the evidence did not showcase any transactions with customers themselves. They suggested that it would have been better to show people visiting and making orders from the webpage. The evidence at hand did not show if any Big Macs had been sold. Similarly, the brochures did show that they offered Big Macs but did not actually point to any eventual purchase. Finally, in an admittedly bizarre piece of logic, they discredited the Wikipedia entry on Big Macs, partly on the grounds that anyone could have amended the entry, but also because even if it was true none of the other pieces of evidence supported it so it was inconclusive. As a result, McDonald’s failed to prove genuine use and lost its trademark.
On the one hand, this result could be beneficial. Trademarks are a potentially lucrative asset, allowing a business to protect its brand legally and forge a deeper connection with its customers. However, in our hypercompetitive globalised world, large corporations have become increasingly rapacious in acquiring trademarks. This has the effect of stifling small businesses who would find it hard to compete against an established brand (eg how do you distinguish yourself against a Starbucks or an Apple?). In this context, Supermacs win means that large corporations do not have complete control on a market and there is room for someone to challenge them and even win.
But, on the other hand, this is not a victory in the legal sense. In this author’s opinion, the office’s reasoning regarding the evidence was unnecessarily severe. Their attitude to the brochures is interesting. While it is true that advertising doesn’t always lead to sales, it would be very anomalous if a business was advertising something it didn’t wish to sell. Furthermore, while the office said regulations meant they couldn’t give the affidavits the same weight as third-party testimony, it seems harsh to disregard it completely. The other evidence at least supported the affidavits. Finally, the greatest possible criticism is that the EUIPO ruled that McDonald’s essentially couldn’t prove it sold Big Macs. While the law ought to be as meticulous as possible, I feel that this goes against common sense. If McDonald’s can’t prove that it sells one of its most famous products, then something has gone very wrong.
Currently, big business dominates our economic system. It would be welcome to see established bodies assisting small business. Yet, this should not come at the cost of good law. While the EUIPO may have been trying to be as objective as possible, this ruling comes across as myopic. It has also led to some businesses, such as Burger King, trolling McDonalds in their restaurants, calling their burgers ‘Not Big Macs’. This, combined with the EUIPO’s approach, leaves a bad taste in the mouth.
By Daniel Forde – Law Editor