McDonald’s Loses EU Battle over Big Mac® Trademark

McDonald’s, the iconic American fast-food chain, has recently faced a setback in its longstanding trademark battle within the European Union (EU).

According to a June 5th press release from the EU’s General Court regarding the ruling in the case styled as Supermac v. McDonalds International, the ruling which revoked McDonald’s® EU trademark for Big Mac® in connection with certain goods and services, underscores the critical importance of proving genuine and continuous use of trademarks in maintaining their legal protection.

Background of the Big Mac® Trademark

The dispute centers around the EU trademark Big Mac®, which McDonald’s obtained in 1996. In 2017, Supermac’s, an Irish fast-food chain, challenged the validity of McDonald’s trademark, alleging that it had not been genuinely used within the EU in connection with certain goods and services for a continuous period of five years.

The European Union Intellectual Property Office (EUIPO) partially upheld Supermac’s application for revocation, affirming the protection of McDonald’s mark for certain categories such as foods prepared from meat and poultry products, as well as services associated with operating restaurants and other food establishments. However, the EUIPO also found that McDonald’s failed to demonstrate genuine use of the Big Mac® mark for specific goods and services, including chicken sandwiches, foods prepared from poultry products, and certain restaurant services.

General Court's Judgment

In its judgment, the General Court further narrowed the scope of McDonald’s trademark protection, ruling that the company had not adequately proven genuine use of the mark for the contested goods and services. The court emphasized the lack of evidence regarding the volume of sales, the duration of use, and the frequency of use of the Big Mac® mark in connection with chicken sandwiches, foods prepared from poultry products, and certain restaurant services.

This ruling highlights the stringent requirements for maintaining trademark rights in the EU. To sustain trademark protection, owners must demonstrate continuous and genuine use of their marks in connection with the goods and services for which they are registered. Mere registration of a trademark does not guarantee its ongoing validity; rather, it is contingent upon the mark being actively used in commerce.

Impact on McDonald's

McDonald’s failure to adequately prove genuine use of the Big Mac® mark serves as a cautionary tale for trademark owners. In today’s competitive marketplace, where brands constantly evolve and adapt to changing consumer preferences, diligent maintenance of trademark rights is paramount. This includes not only registering trademarks but also actively using and enforcing them to prevent erosion of their legal significance.

The ruling also underscores the importance of comprehensive and compelling evidence in trademark disputes. Evidence of use should clearly demonstrate the commercial presence and significance of the mark in the relevant market. Without such evidence, trademark owners risk losing their exclusive rights and facing challenges from competitors seeking to exploit perceived weaknesses in their trademark portfolios.

Implications for Other Brands

Moving forward, trademark owners, particularly those operating in the EU, should heed the lessons learned from McDonald’s Big Mac® trademark dispute. Proactive measures, such as regular monitoring of trademark use, documenting sales figures, and maintaining detailed records of marketing activities, can help strengthen the evidentiary basis for defending trademarks against challenges to their validity.

In conclusion, the General Court’s ruling in the McDonald’s Big Mac® trademark dispute serves as a reminder of the importance of continuous and genuine use in maintaining trademark rights. Trademark owners must remain vigilant in protecting their brands and be prepared to substantiate their claims of trademark use with compelling evidence. Failure to do so may result in the erosion of trademark rights and potential loss of exclusivity in the marketplace.

For more information about trademark protection and registration, see the Klemchuk PLLC trademark services page.

Klemchuk PLLC is a leading IP law firm based in Dallas, Texas, focusing on litigation, anti-counterfeiting, trademarks, patents, and business law. Our experienced attorneys assist clients in safeguarding innovation and expanding market share through strategic investments in intellectual property.

This article is provided for informational purposes only and does not constitute legal advice. For guidance on specific legal matters under federal, state, or local laws, please consult with our IP Lawyers.

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