A decision earlier this week by the EU Intellectual Property Office (EUIPO), has put a spotlight on the importance of filing specific and detailed evidence when proving the genuine use of a trade mark. The decision acts as a warning to those whose trade mark is under attack and requires that the extent of use is clearly demonstrated by reference to timings, territories and commercial sales.
In this case, Supermac (Holdings) Limited (Supermac) sought to cancel McDonald’s International Property Company Ltd’s (McDonalds) EU Trade Mark Registration No. 62638 for BIG MAC (word only) (the Mark), on the basis that the Mark had not been put to genuine use during a continuous period of five years following its registration in 1998. The cancellation application was filed against all the goods and services for which the Mark was registered which included various food products, including “meat sandwiches” in Classes 29 and 30 as well as various restaurant related services in Class 42.
As part of the initial cancellation proceedings, McDonalds filed evidence of their use of the Mark which includes various witness statements from its Directors, copies of advertising material and brochures, print outs from its various websites and also an extract from Wikipedia to provide historical background on the product itself. Analysis of the evidence found the witness statements to carry little weight as they were provided by employees of McDonalds and therefore was not from an independent source. Criticism was also made of the specific information associated with the advertisements, brochures and websites, as McDonalds had not set out the territorial extent of the Mark’s use, the commercial volume of orders placed nor the duration and frequency that the Mark had been used. The examiner provided commentary that, had McDonalds included specific reference to how often their website was visited and in which territories, this would have given more of an indication as to the extent the Mark was being used. Additionally, the examiner highlighted the need for information on how consumers purchase the product or placed orders as well as information on whether any orders were in fact placed.
The EUIPO’s final decision found that McDonalds had failed to sufficiently demonstrate genuine use of the Mark, for all the registered goods and services, in the EU during the five year period of 11 April 2012 to 10 April 2017 and therefore revocation of the Mark would take effect from 11 April 2017.
Whilst the decision of the EUIPO may seem strict, particularly given the perceived goodwill associated with the BIG MAC mark, it does highlight the need for evidence of use to be specific, refer to timings and territories and also demonstrate that actual sales have taken place through consumer engagement. This will require those defending their trade mark registrations to dedicate time and effort into establishing such use in order to avoid assumptions having to be made by the examiner which may lead to their trade mark registration being put at risk.
If you would like any further information of proving genuine use of a trade mark, bringing or defending trade mark cancellation actions or have any queries concerning infringement of intellectual property rights, please contact Blake Morgan’s Intellectual Property team.