[{"@context":"https:\/\/schema.org\/","@type":"BlogPosting","@id":"https:\/\/www.grossmcginley.com\/resources\/blog\/trademark-dispute-costs-mcdonalds-its-big-mac\/#BlogPosting","mainEntityOfPage":"https:\/\/www.grossmcginley.com\/resources\/blog\/trademark-dispute-costs-mcdonalds-its-big-mac\/","headline":"Trademark Dispute Costs McDonald’s BIG MAC","name":"Trademark Dispute Costs McDonald’s BIG MAC","description":"In what has been described as a \u201cDavid versus Goliath\u201d trademark dispute, the Cancellation Division of the […]","datePublished":"2019-02-28","dateModified":"2021-09-20","author":{"@type":"Person","@id":"https:\/\/www.grossmcginley.com\/resources\/author\/h-ross-ramaley\/#Person","name":"H. Ross Ramaley","url":"https:\/\/www.grossmcginley.com\/resources\/author\/h-ross-ramaley\/","identifier":48,"image":{"@type":"ImageObject","@id":"https:\/\/secure.gravatar.com\/avatar\/87fa117339afbb0d4eda681dca8a552e?s=96&d=mm&r=g","url":"https:\/\/secure.gravatar.com\/avatar\/87fa117339afbb0d4eda681dca8a552e?s=96&d=mm&r=g","height":96,"width":96}},"publisher":{"@type":"Organization","name":"Gross McGinley, LLP","logo":{"@type":"ImageObject","@id":"https:\/\/www.grossmcginley.com\/wp-content\/uploads\/2017\/10\/logopng-00436945-e1531508982151.png","url":"https:\/\/www.grossmcginley.com\/wp-content\/uploads\/2017\/10\/logopng-00436945-e1531508982151.png","width":600,"height":60}},"image":{"@type":"ImageObject","@id":"https:\/\/www.grossmcginley.com\/wp-content\/uploads\/2019\/02\/mcdonalds-trademark-dispute.jpg","url":"https:\/\/www.grossmcginley.com\/wp-content\/uploads\/2019\/02\/mcdonalds-trademark-dispute.jpg","height":800,"width":800},"url":"https:\/\/www.grossmcginley.com\/resources\/blog\/trademark-dispute-costs-mcdonalds-its-big-mac\/","about":["Blog"],"wordCount":447,"keywords":["Business Law","Intellectual Property"],"articleBody":"In what has been described as a \u201cDavid versus Goliath\u201d trademark dispute, the Cancellation Division of the European Union Intellectual Property Office (\u201cEUIPO\u201d) handed down a surprising decision cancelling the McDonald\u2019s BIG MAC trademark registration entirely within the EU.The trademark dispute over BIG MAC\u00a0 began in 2014 when McDonald\u2019s cited the trademark in an attempt to block the expansion of Supermac\u2019s, an Irish fast food chain, into the EU. In response, Supermac\u2019s filed a challenge of its own in an ultimately successful attempt to cancel the BIG MAC trademark registration on the basis that McDonald\u2019s had not been putting the trademark to genuine use in the EU.When a trademark is challenged for non-use, the burden is placed on the trademark owner to prove that the trademark is actually being used.\u00a0 To prove use in an EU trademark dispute, the evidence must sufficiently establish the place, time, extent, and nature of use.\u00a0 In this case, McDonald\u2019s evidence of use included:\tThree affidavits signed by McDonald\u2019s representatives in the UK, Germany, and France claiming significant sales of Big Mac sandwiches in their respective EU member states;\tMarketing and packaging materials;\tPrintouts from McDonalds\u2019 various European websites depicting the Big Mac sandwich; and\tA printout from McDonalds\u2019 Wikipedia page providing information on the sale of Big Macs in various countries.While the evidence displayed the BIG MAC trademark in relation to at least some of the relevant goods and services, the EUIPO ultimately held that McDonald\u2019s failed to prove genuine use because the evidence presented did not establish the extent of use. The EUIPO\u2019s decision was predicated, in part, on its finding that the submitted evidence lacked probative value (or weight) because almost all of the evidence originated from McDonald\u2019s itself, rather than an uninterested third party. Further, the EUIPO found the evidence was deficient to prove use since there was \u201cno confirmation of any commercial transactions, either online, or via brick-and-mortar operations \u2026 and no information of any actual sales taking place or any potential and relevant consumers being engaged, either through an offer, or through a sale.\u201dWhile the EUIPO\u2019s decision is instructive for EU trademark owners when attempting to prove use of a trademark in the EU, this case also reinforces the importance for all trademark owners to maintain a diligent approach to trademark protection regardless of the trademark\u2019s commercial success. It also serves as a fair warning that competitors will take advantage of these situations, as with Burger King.Attorney Ross Ramaley is a member of the firm’s Business Services Group and provides legal counsel with regard to trademarks and intellectual property matters."},{"@context":"https:\/\/schema.org\/","@type":"BreadcrumbList","itemListElement":[{"@type":"ListItem","position":1,"name":"Resources","item":"https:\/\/www.grossmcginley.com\/resources\/#breadcrumbitem"},{"@type":"ListItem","position":2,"name":"Blog","item":"https:\/\/www.grossmcginley.com\/resources\/\/blog\/#breadcrumbitem"},{"@type":"ListItem","position":3,"name":"Trademark Dispute Costs McDonald’s BIG MAC","item":"https:\/\/www.grossmcginley.com\/resources\/blog\/trademark-dispute-costs-mcdonalds-its-big-mac\/#breadcrumbitem"}]}]