Following the Irish fast food chain Supermac’s successful opposition to cancel McDonald’s EU trade mark for “BIG MAC” earlier this year, Supermac has won another cancellation action to cancel the vast majority of the goods/services covered under McDonald’s “Mc” trade mark in the EU on the grounds of non-use.
Whilst McDonald’s was able to save the EU “Mc” mark in respect of chicken nuggets and edible sandwiches; various other goods such as foods prepared from meat and poultry products (except for chicken nuggets), non-alcoholic beverages and restaurants services have all been cancelled from the trade mark registration.
In the evidence submitted by McDonald’s to show genuine use of the “Mc” mark, which included references to for example McCroissant, McMorning, McBaguette, McCurrywurst, McMenü, McCafé and McSundae, unfortunately for McDonalds, the EUIPO held that those documentary evidence were not sufficient as they did not show sufficient particulars as to the extent of use. These “Mc” prefixed signs were therefore not able to save the “Mc” mark.
The relevant factors when assessing genuine use (namely time, place, extent and nature of use) are cumulative. Brand owners should therefore take note that when providing evidence of genuine use, that the documents collectively show all the relevant factors and not just some.
In relation to McDonald’s other used signs such as “McDonald’s”, the EUIPO held that such mark could not constitute a permitted variation of use of the “Mc” mark. However other signs such as McMUFFIN, McRIB, McNUGGETS, McWRAP and McFISH which comprised of “Mc” along with a descriptive word of the goods in question did not alter the distinctive character of the “Mc” mark and therefore constituted use of the “Mc” mark. Those goods in which there was use, namely chicken nuggets and sandwiches were consequently saved from the cancellation attack.
So what does this mean for McDonalds? Whilst they can still use the “Mc” prefix, their ability to enforce their rights in the “Mc” mark against third parties may become more limited. However whether McDonald’s will appeal the decision (as with the BIG MAC case) is another question.
Brand owners should therefore remember that if they do not use their registered trade marks in question in relation to the registered goods/services, they risk losing them for non-use.
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