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Why Big Macs have lost their “mark”

29th January 2019

In what some commentators have described as the most significant changes to trade mark legislation for 30 years, the Trade Marks Regulations 2018 were implemented throughout the UK on Monday 14 January, following a 10-year EU harmonisation project.

Then just a day later, Irish fast food chain Supermac’s won its long legal battle with US giant McDonald’s to have the use of its ‘Big Mac’ trademark cancelled throughout Europe, following a ruling from the EU Intellectual Property Office (EUIPO).

Might is not always right

This David versus Goliath case has highlighted the need for brand owners to ensure the trademarks they register are actually used on a regular basis or they risk losing their rights in those marks.

Supermac’s claimed McDonald’s was engaged in trademark bullying; registering brand names which it simply archived to use in the future against competitors – a tactic it appears the EUIPO agrees is limiting growth of rival brands.

McDonald’s EU trade mark for ‘Big Mac’ was revoked after the EUIPO determined McDonald’s could not prove the brand had been put to ‘genuine use’ in respect of the classes of goods and services covered by the trade mark.

McDonald’s has fallen foul of EU law that requires evidence of use of the trade mark that establishes the place, time, extent and nature of its use for the goods and/or services it is registered for – failing on one of these criteria will lead to the evidence being rejected.

McDonald’s tried to show evidence of use through presenting lots of different marketing collateral, but could not produce evidence they had actually sold any food products bearing the EU trade mark contested by Supermac’s.

The decision will also perhaps rein in the brand owners who register trademarks merely to prevent competitors using them, given this ruling shows they may be required to demonstrate genuine use across the range of goods and/or services for which the trademarks are registered.

Only time will tell if this ruling signals the start of more challenges to what is seen by many as trademark bullying, with the EUIPO warning brand owners it is time to use it or lose.

Protect the brands you use

Despite McDonald’s intention to appeal the ruling, it highlights there are important steps businesses in the UK should take to protect the name, brand or logos they have developed over time.

The first step is to explore the possibility of registering the trademarks you are using or plan to use in the near future – not forgetting the ‘use it or lose it’ implication of the recent McDonald’s ruling.

A registered trademark enables you to stop a competitor using the same mark or something confusingly similar in the registered industry sector.

The process of registering a trademark is usually straightforward and inexpensive, often achievable for less than £1,000, especially with the support of experienced advisors.

Whatever has happened in the past, the EUIPO has appeared to show it will not tolerate organisations acting like holidaymakers placing their towels on sunbeds by the pool, just in case they want to use them later, preventing others snapping up the prime spots in the process.

What the Supermac’s case against McDonald’s does demonstrate though is that smaller businesses can stand up to a larger business in intellectual property disputes and win, if their cause is just – revenues for Supermac’s were around £100million in 2017 compared to McDonald’s £17.29 billion.

If you have a trade mark on which your business relies, now is a good time to register it if possible and if it is already registered let’s discuss how to tighten your grip, before a competitor decides to challenge you.

If you need assistance, speak to our expert Martin de Ridder on 01543 431186 or email him at mderidder@ansonssolicitors.com