Donvay Wegierski | Director | Intellectual Property Practice | Werksmans Attorneys | mail me |
A registered trademark is vulnerable to revocation or cancellation for non-use. Non-use is if it has not been used for the goods and/or services for which it is registered for a certain amount of time. In most instances this time period is five years. This is calculated from the date of registration, as in South Africa and the European Union.
On 5 June 2024 in proceedings brought by Supermac against the European Union Intellectual Property Office (EUIPO) and McDonalds, the General Court held that McDonald’s had in fact failed to establish genuine use of its BIG MAC European Union Trade Mark (*EUTM). The proceedings were in respect of “chicken sandwiches” and “foods prepared from poultry products”. In addition, in the service class for “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”.
The General Court therefore partially annulled and altered the decision of the EUIPO, Consequently those goods and services have been revoked from the EUTM for BIG MAC aside from “meat sandwiches.”
While McDonalds can still use the mark BIG MAC in the European Union (EU) this ruling means that it no longer has exclusivity to BIG MAC for chicken sandwiches, foods prepared from poultry products and those restaurant services for which protection has been revoked.
Background
In respect of EUTMs, once non-use is raised the burden shifts to the owner of the mark to prove genuine use of the mark for at least five consecutive years in the territory for the relevant goods and services. Evidence of genuine use in at least one member country of the EU is required.
Proceedings between Supermac and McDonalds go back to 2015 when McDonald’s opposed Supermac’s EUTM for Mc.
In 2017 Supermac retaliated with an action to revoke its EUTM for BIG MAC on the basis of non-use. Those proceedings were upheld in January 2019 whereafter McDonald’s successfully appealed in March 2019, with that successful appeal brought before the General Court by Supermac.
Evidence and genuine use
When assessing whether use of a trademark is genuine regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark in the course of the trade is real.
The General Court considered the EU Regulations that provide that evidence of use must establish:
- the place, time, extent, and nature of use of the trademark;
- that the type of evidence be confined to packages, labels, pricelists, catalogues, invoices, photographs, newspaper advertisements and statements in writing clearly showing the trademark.
The evidence that McDonalds had submitted to the EUIPO Cancellation Division were printouts of advertising posters in France, screenshots of television advertisements broadcast in France in 2016 and screenshots from MacDonald’s France Facebook account from 2016.
See below by way of illustration:
The General Court held that this evidence did not show any regularity and recurrence that the BIG MAC goods were distributed and was therefore insufficient to establish that commercial use of BIG MAC for “chicken sandwiches” was real. Furthermore the evidence did not include prices at which those goods where marketed.
At paragraph 24 of the General Court judgment “genuine use of a trademark cannot be proved by means of probabilities or presumptions but must be demonstrated by solid and objective evidence of actual and sufficient use of the trademark on the market concerned”.
Implications for brand owners
This judgment is a reminder that even well-known brands may face cancellation or partial cancellation proceedings.
In defending proceedings for revocation or cancellation the evidence adduced should clearly show the mark and that the mark is used in commerce in respect of the relevant goods and or services and during the relevant time. Token or once off use may be insufficient.
Brand owners should retain evidence of use and maintain comprehensive records. Brand portfolios should be regularly reviewed, and protection obtained for all forms of the mark, for all relevant goods and/or services and in all relevant territories.
Related FAQs: Trademark non-use
Q: What is trademark non-use and how does it affect trademark registration?
A: Trademark non-use refers to the failure to use a trademark for the goods or services it was registered for, particularly over a continuous period of five years. If a trademark is not used, it may become vulnerable to cancellation under trademark law.
Q: How can a registered trademark be canceled due to non-use?
A: A cancellation application can be filed by any interested party, claiming that the registered mark has not been used for the relevant period. The proprietor must then provide proof of use to defend against a non-use cancellation action.
Q: What constitutes “use of a trademark” in the context of trademark law?
A: The use of a trademark generally means using the mark in the course of trade in relation to the goods or services for which it is registered. This includes any bona fide use that demonstrates the trademark’s function as an identifier of the source of goods or services.
Q: What is the significance of the “Big Mac” case in relation to trademark non-use vulnerability?
A: The “Big Mac” case highlighted how even well-known trademarks can be vulnerable to cancellation if they are not actively used. This case serves as a reminder for trademark proprietors to maintain ongoing use of their registered trade marks to avoid cancellation risks.
Q: What is the period of five years related to trademark registration?
A: Under trademark law, if a trade mark is not used for a continuous period of five years, it may be deemed vulnerable to cancellation. This rule encourages trademark owners to actively use their marks to maintain registration status.
Q: What steps should a trademark owner take to prevent non-use cancellation?
A: To prevent non-use cancellation, a trademark owner should ensure regular use of the trademark in relation to their goods or services. Keeping proper records of such use can also serve as proof if a cancellation action is initiated against them.
Q: Can a trademark be registered without a bona fide intention to use it?
A: No, a trademark application must demonstrate a bona fide intention to use the trademark. If it’s determined that the applicant has no intention to use the mark, it may lead to the refusal of the trademark registration.
Q: What happens if I fail to use my trademark after registration?
A: If you fail to use your registered trade mark for the relevant period, it may be subject to a cancellation application by another party. To protect your rights, it is essential to use the trademark regularly and document its use.
Q: How can I prove the use of a trademark in a cancellation action?
A: Proof of use can include various types of evidence such as sales invoices, advertising materials, or any other documentation that demonstrates the trademark’s use in the marketplace in relation to the registered goods or services.
Q: What is the consequence of a successful non-use cancellation?
A: If a non-use cancellation is successful, the trademark registration may be canceled, meaning the proprietor loses exclusive rights to the mark, and it could potentially be available for registration by other parties.
