The decision of January 11, 2019 caused lots of media attention. The EUIPO (European Union Intellectual Property Office) granted the application for revocation by a competitor relating to the EU trademark “BIG MAC” (Case no. 14 788 C). The reason: McDonald’s failed to sufficiently prove genuine use of the trademark. While this is difficult for outsiders to understand, it shows the strict requirements that the Office places on the type and scope of proof of genuine use.
Upon expiry of five years after registration, an application for revocation of a trademark on grounds of non-use may be filed with the EUIPO by any third party. The evidence must cumulatively prove the place, time, extent, and manner of use. McDonald’s merely submitted affidavits signed by company representatives detailing sales figures for burgers under use of the BIG MAC trademark, as well as samples of advertising material and packaging. Despite the declaration of millions in sales, the Office deemed this evidence alone insufficient to prove genuine use. While written submissions by the proprietor are admissible as evidence, they hold lower evidential value because of the trademark proprietor’s own interest, so that they would have to be supported by other (more objective) evidence.
Nonetheless, we will not be eating Big Macs from other burger chains in the near future: McDonald’s will certainly attempt to obtain the admission of additional evidence in the appeal proceedings and owns numerous national “BIG MAC” word marks in addition to the challenged EU trademark.
In order to provide evidence of genuine use, in addition to affidavits submitted by the trademark proprietor, invoices or similar, objective proof of sales under use of the trademark must always be submitted, such as press releases or market studies, or statements by third parties such as customers or franchisees.