The Judgment of the General Court in case T-58/23 | Supermac’s/EUIPO — McDonald’s International Property (BIG MAC) has recently been published in relation to European Union trademark no. 62638 “BIG MAC”, owned by McDonald’s (hereinafter, the McDonald’s Trademark), which we understand to be of great importance for understanding the importance of the use of trademarks and its consequences, as well as the means of proof necessary to demonstrate their use.

The decision of the General Court of the European Union partially upholds the claim filed by Supermac’s, annulling and modifying the Ruling of the Fourth Board of Appeal of the EUIPO of 14 December 2022 in case R 543/2019-4, which understood that the use by McDonald’s of various goods and services had been demonstrated, while the Judgment has revoked the ruling and, consequently, the BIG MAC trademark for “chicken sandwiches”, “foods prepared from poultry products” and services in class 42 “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”, for which it considers that McDonald’s has not demonstrated use, lapses.

To understand the reason for this Judgment, we have to go back to 1996, when McDonald’s filed an application with the EUIPO for European Union trademark no. 62638 “BIG MAC” (word mark) with broad protection, protecting the following goods and services in classes 29, 30 and 42.

According to the trademark regulation, a trademark owner is obliged to use the registered sign as it has been registered and for all the goods and services designated by the trademark. The main objective of this measure is to ensure that trademarks that are actually being used remain in force, so that those that are not being used cannot prevent the registration of new trademarks by third parties.

This mandatory use is only enforceable once five years have elapsed since the trademark was granted. In this case the registration date goes back to 1998.

Therefore, once this period has elapsed (as has occurred in this case), its owner may be required to prove use in the proceedings established by trademark legislation, including an action for revocation due to non-use.

Thus, Supermac’s, suspecting that this trademark might not be being used for all the designated goods and services, filed the action for revocation against it in 2017 (on which this judgment is predicated), and McDonald’s had to provide documentary evidence in these proceedings that the trademark was being used for all the goods and services designated by it.

And, as is clear from that Judgment, which has led to the revocation of the word mark BIG MAC for “chicken sandwiches”, “foods prepared from poultry products” and services in class 42 “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”, the evidence provided by McDonald’s does not demonstrate use of the trademark for those goods and services.

In short, the mandatory nature of use and documentary proof of use, as is clear from the judgment, is of vital importance for all trademark owners, regardless of whether the owner is a small company or a multinational such as McDonald’s, since if sufficient evidence is not provided to demonstrate use of the trademark, it runs the risk of being revoked, as has occurred in this case.

Emilia Seijo Veiguela
Intellectual Property Lawyer in the PONS IP Litigation Department