BIG MAC: A BURGER OR A RESTAURANT?
The BIG MAC is arguably the world’s most famous burger. This illustrious burger has even traversed the realm of fast-food and entered the financial services world in the form of the “Big Mac Index” created by economists to examine the relative valuation of currencies worldwide. But can one say that the BIG MAC trade mark has been used in relation to restaurant services?
In order for a trade mark to remain valid and in force, it must be used in relation to the goods and/or services in relation to which it is registered. Failure to do so may result in a mark being vulnerable to cancellation on the basis of non-use.
The issue of non-use was dealt with in a case between Supermac’s Holdings and McDonald’s in which Supermac’s applied to cancel McDonald’s European Union trade mark registration for the BIG MAC mark on the basis that there had been no “genuine use” of the mark for a continuous period of 5 years. The cancellation application was brought in terms of Article 58(1)(a) of the European Union Trade Mark Regulations which reads as follows:
“If within a continuous period of 5 years after the EUTM has been registered and before the filing of the application for cancellation the EUTM has not been put to genuine use, within the meaning of Article 18 EUTMR, then the EUTM must be revoked unless there are proper reasons for non-use”
The Court found in favour of Supermac’s and effectively cancelled the BIG MAC word mark in classes 29, 30 and 42. McDonald’s then appealed to EUIPO’s Board of Appeals.
The Board of Appeals found that McDonald’s had in fact made “genuine use” of the BIG MAC mark thereby overturning the Cancellation Division’s decision. According to the Court, “genuine use” of a trade mark occurs when the mark is used to “guarantee the identity of the origin of the goods/services for which it is registered, in order to create or preserve an outlet for those goods or services”. The goods and services in question are as follows:
- Class 29 - Foods prepared from meat and poultry products, meat sandwiches, chicken sandwiches;
- Class 30 - Edible sandwiches, meat sandwiches, chicken sandwiches; and
- Class 42* - Services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive- through facilities; preparation of carry-out foods.
*These services now fall within class 43
The Board of Appeals’ decision regarding the class 42 registration is an interesting one as McDonald’s does not use the BIG MAC mark in relation to restaurant services. The consumer surveys submitted by McDonald’s revealed that the BIG MAC product has a high degree of recognition among consumers and that it is automatically associated with McDonald’s restaurant services. Whilst this confirms the inextricable link between the BIG MAC mark and the MCDONALDS brand, it does little to support the view that this mark is used in relation to restaurant services in particular.
Ultimately, the appeal Court was of the view that the evidence submitted by McDonald’s illustrated that the use of the BIG MAC mark was “intended to distinguish the restaurant services provided by the EUTM proprietor from similar services of third parties”.
It goes without saying that there is an overlap between foods and restaurant services and as a result, consumers associate the BIG MAC mark with the MCDONALDS brand. However, speaking purely from a registrability perspective, the fact remains that the BIG MAC mark is used in relation to a burger and not in relation to restaurant services. The overlap between the goods and services does not equate to use of the mark in relation to restaurant services.
By extending McDonalds’ rights in and to the BIG MAC mark to restaurant services on the basis that this mark is linked to the entity’s restaurant services, the line between trade mark use and promotional use appears to have been blurred.