Use it or lose it – Why the McDonald’s EU Big Mac trademark battle matters in the UK

Big Mac EU trademark battle

Many big-name brands have crafted an identity around their products and services, a bond that makes them synonymous with one another whilst being protected by seemingly iron-clad trademarks.

But whilst it is arguably the most famous burger in the world, the term ‘Big Mac’ is no longer exclusive to McDonald’s after a legal challenge from an Irish chain resulted in the EU’s highest court ruling that the fast food giant could no longer exclusively use the label on chicken burgers.

Whilst this ruling related to McDonald’s EU trade mark, lessons from the case can be learned by businesses in the UK. Thrings’ Intellectual Property expert Megan Jefferies runs through what you need to know:

The challenge

Supermac’s, a fast food chain that has been running in Ireland since the late 1970’s, initially challenged the use of the Big Mac trademark in the European Union Intellectual Property Office (EUIPO) in 2017 due to the obvious conflicts with their own business name, with McDonald’s blocking Supermac’s attempt to register their name as a trademark to enable it to expand outside Ireland.

This initial challenge was unsuccessful but was then progressed all the way to the European Court of Justice where McDonald’s were required to prove genuine use of the Big Mac mark in relation to their chicken sandwiches within the EU in the previous five years – something they were unable to do.

What is the law?

Whilst this case happened in the EU, it is still persuasive in the UK. Both jurisdictions have laws that enable third parties to challenge registered trademarks if they have not been put into genuine use for the goods and/or services of which they are registered in the relevant territory within a five-year period.

This ‘vulnerability to challenge’ regime is quite light touch compared to the much tighter laws in the US where there is a requirement to show proof of usage for all marks every five years to avoid them lapsing – with the US Patent and Trademark Office (USPTO) often conducting spot audits.

In the US, for those that aren’t able to demonstrate use of their mark, the most common outcome is for the registration to be revoked, either in its entirety or in relation to goods and services where they are able to provide evidence of use.

After the transitional period concluded once the UK left the EU, the UKIPO cloned all EU marks onto the UK register to ensure that home-grown rights weren’t lost. The Big Mac EU mark which was at the heart of this case was therefore cloned onto the UK register. We will have to wait to see whether that UK mark is subjected to challenge in this jurisdiction.

With McDonald’s Big Mac trademark registration covering a wide range of goods and services, not just the iconic beef burger, it could be the case that other third parties could come forward with challenges to the registration of other goods covered – in this case such things as ‘pork sandwiches’, ‘fish sandwiches’, biscuits, cakes, cookies and chocolate – in either the EU or the UK.

What does this mean for other businesses?

The main point to take from the case would be for businesses to only apply for trade marks in relation to goods and services they already use or genuinely intend to use them on. Where use is not regular or obvious then trade mark owners would do well to keep evidence of genuine use to hand so it is prepared to counter any challenges on the basis of lack of use.

With the registers becoming ever more overcrowded, third-party challenges are becoming ever more common, with existing registrations that were made with products and services included ‘just in case’ becoming potential targets.

Thrings’ Intellectual Property lawyers are experienced in providing strategic advice in relation to trade mark applications, safeguarding brands and trademarks from infringement and have successfully advised multinational organisations on a range of matters from IP disputes, including copyright infringement, and trademark registration to managing diverse portfolios and worldwide expansions. To find out how they can help protect your IP rights, get in touch.

Thrings intellectual property lawyers

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