McD’s lawyers screwed up, not submitting required evidence of actual use in years 2011-2016. They printed out webpages with promo materials and a wikipedia page (as article correctly points, “duh, we are McDonalds”) - not a great proof of anything for any court. Then submitted some packaging of the product.
Not any evidence that the product was actually sold and trademark used in those five years - no sales figures, website traffic stats… As said, makes sense to me
Edit: that said, still makes no sense why were they challenging the use of Big Mac in the first place… shrugs
Supermac’s said it can now expand in the United Kingdom and Europe. It said it had never had a product called “Big Mac” but that McDonald’s had used the similarity of the two names to block the Irish chain’s expansion.
From the other articles I've seen about this the implication is that the judgement was probably heavily influenced by McDonald's own anti-competitive shenanigans of trademarking names of competitors products:
The US chain had also trademarked the term “SnackBox,” an offering by Supermac's that McDonald’s does not offer.
Newspaper articles talking about Big Macs would also have helped. And if you are unwilling to release sales figures or website traffic statistics, newspaper articles are a decent alternative option.
Thanks for the link. There is a good comment there from purple_ducks:
> What's more ridiculous is McDonalds trademarked the name of a competitors (arguably) flagship product - which they(McD) never used:
That definitely doesn't give an impression of a McDonalds who is acting in good faith. Not that that justifies the EU (two wrongs don't make a right or something like that), but it does make McDs a little less of a sympathetic figure.
EUIPO says McDonalds didn't prove they sold bigmacs in europe... The decision says Mcdonalds submitted 3 affidavits, brochures, menus, packaging, and SALES FIGURES of Big Macs in Europe... and the EUIPO said they don't believe any of it.
Bizarre.
If actual sales aren't evidence of use, how do you prove this? If I had a trademark in europe, I would be worried.
McDonalds failed to provide sufficient data. They only provided tiny table of numbers for the UK, France and Germany. E.g. <quote>...the total number of products sold under the Mark between 2011 and 2016 was in excess of (units in millions):
2011 2012 2013 2014 2015 2016
Big Mac 75 75 75 75 75 75
</quote>
The numbers fail to cover the entirety of the relevant time period (2012-2017 inclusive), region (all member states of the EU!) and goods (e.g. sandwiches). They are also just self-proclaimed numbers with zero independent evidence to back them up. The EUIPO notification spells this out clearly on page 4.
Sure, McDonalds should appeal and will probably overturn this, but not because the EUIPO made a mistake, but because McDonalds's lazy tactic to appeal to its marketing material. (After starting all this to bully a tiny competitor to keep them from expanding in the EU.)
1) On UK, France Germany data: are you saying that EU trademarks must be used throughout europe in order to be valid? So supermac for example doesn't have a valid EU trademark because they operate only in ireland?
2) Self proclaimed numbers: I'm not aware of any reporting requirements for specific product lines. They're not reported for tax purposes.. just the overall company revenue/profits/etc. If McDonalds issued a regular report of revenue of each product line, that wouldn't satisfy the standard either, because that also comes from them. What independant authority could provide specific sales data for a company's product?
Further, if I run a small business, does all of this mean I don't have a valid trademark? After all, who will vouch for my private small business sales of specific products.
I understand these are the reasons stated... and that is why I would be concerned. I asked, how would a small business owner meet this standard of proof.. and in response, you just restated the unreasonable standard. So I'll ask again, what kind of evidence could be provided by a small business that would meet these standards? It appears that EUIPO has just set a standard that no small business could meet, and therefore has made it near impossible for small businesses to enforce their trademarks.
Section II.5.2:
"It is not necessary that the mark must be used everywhere in the Community. Genuineness of use may be found also
when the mark has been used in only one part of the Community, such as in a single Member State or in a part thereof."
Section II.9.1:
"The use need not have been made throughout the period of five years, but rather within the five years."
Section III.7.2:
"The standard of proof
The CTM Regulation requires proof of genuine use of the earlier mark. Therefore the evidence submitted by the opponent must consist of proof, i.e. substantial evidence that the mark has been put to genuine use. Making merely a prima facie case is not sufficient."
There are many examples of sufficient and insufficient proof of use throughout the guidelines.
One example: "759/1999 MERITENE / MERTINA (EN): the Opposition Division found that a catalogue presenting the goods, price lists for 2 years, labels and advertisements were insufficient evidence, since they did not contain any information on the extent of use. The Board of Appeal (R 743/1999-1) reversed this: the information contained in the catalogue (products offered on the market) and the price lists (sales conditions) gives a reliable indication of the extent of use of the mark."
Another one: "694/2000 Buss / BOSS (DE): the opponent submitted an affidavit of the opponent’s manager and a series of undated labels and pages of catalogues. The Opposition Division regarded the proof of use as insufficient, in particular as regards the time and extent of use. The Board of Appeal confirmed this finding (R 643/2000-1)."
How was this lazy or the EU's ruling in any way sane or sensible at all?
Do the people who work at EUIPO ever walk down a city street? Do they live in the real world at all? Why did they even ask McDonald to submit ANY proof that they sell a product called a Big Mac when there has been saturation level coverage of the entire fast food market with this product brand for ... well, I'm pretty sure I don't remember a time when the Big Mac did not exist. So at least as long as I've been alive.
This appears to be a classic case of Kafka-esque bureaucracy, almost certainly politically motivated. No reasonable person would demand proof that McDonalds has a product called a Big Mac because if they've somehow lived in a cave for decades they could just walk down the street and verify it with their own eyes. The fact the the EU not only demanded this, but then rejected actual sales figures, marketing brochures and more as evidence, strongly suggests they wanted to whack McDonalds and nothing they could have submitted would have worked.
Hardly - this case appears to revolve around the decision that Wikipedia isn't an "independent source". That can be argued both ways. Wikipedia isn't owned by McDonalds. They probably didn't write the pages on it. I'm sure the lawyers thought that whoever they were dealing with was just a fussy box ticker and this would be sufficient to tick the box.
Now the correct decision is clearly that McDonalds do sell a product called the Big Mac. That is a matter of fact. If EUIPO managed to conclude that this is in doubt, it's their system for determining facts that is wrong, not reality.
Whoever made this call at EUIPO could easily have accepted the submitted documents as evidence that McDonalds make a product called the Big Mac. They could have worked to ensure this outcome didn't happen. That they didn't do so indicates at best severe dysfunction, at worst some ulterior motive.
The rules are clearly not simple. If they were, McDonalds' team of lawyers wouldn't have been tripped up by them, and in particular if the rules were simple and constant then it'd have been clear what sources would count as independent evidence.
Regardless, expecting employees of companies to be perfect in every way and terminating something as valuable as the Big Mac trademark if they aren't is just bad government. People make mistakes, doubly so if the rules are badly written or being maliciously enforced.
Overall what I see is a near constant stream of attacks on American businesses by the EU, usually via impossibly vague or absurdly written rules. The EU claims to be based on a system of laws but it sure doesn't look like it when you see how things play out in reality.
I don't think they tripped over the complexity here, they tripped over their hubris.
They thought their client's fame was enough to make a case, and didn't put in the leg work to defend it. As I've said a couple of times now it's the law (for every EUTM holder) that you have to absolutely defend your eligibility. As it should be. TMs are a restriction on other people's freedoms.
Should also point out that this was a contestable decision. They (or, more likely, their successors) can probably prove everything that needs to be proven And using better sources than Wikipedia. They'll earn back their mark registration.
There certainly are laws that are protectionist, and have been written with American companies in mind, not because those companies are American, but because those companies are exploiting EU citizens in [what they feel to be] unfair ways. Monopolies, data sharing, etc. The fines and lawsuits that come off the back of these aren't on-the-spot instances either. The laws are written in an open process. They're debated for years. These companies get warnings. And GDPR lawsuits affect organisations on both sides of the pond.
There is some truth in this, but what happens next? Some other lawsuit for a smaller mark will rightfully complain how the burden of proof for bigcorps is now lower than for them. Where do you draw the line?
> Why did they even ask McDonald to submit ANY proof that they sell a product called a Big Mac when there has been saturation level coverage ...
They asked because one of the classes the trademark was registered for (besides "animal based food product" and "sandwich" which are obvious) was "services to operate or franchise restaurants, or construction of restaurants, or consulting for constructing restaurants".
This "services to operate or franchise restaurants" class was apparently used to keep SuperMac from expanding, and from the back and forth documented in the ruling, that was what they were really after. That class isn't sufficiently demonstrated by "we know they have a product by that name" since McDonald's has no "Big Mac stores".
So the claim was that McD abused the trademark in a class they registered it for without using it in that class, and that use in another class isn't enough to hold it.
Article 58(2) EUTMR states that a mark should only be revoked for the good or services for which it fell out of use, so they might have revoked it only for the "services for restaurants" class.
These state that it's up to the trademark owner to prove use, and that probabilities or presumptions shall not be used (that might be unfair against the applicant).
They applied that argument (which originally was made against a German company, so probably not "politically motivated" in the way you alluded to?) identically to McD's submission. The situation was nearly the same: as "proof" they offered material that merely showed that some sale probably has happened at some point in time. The Centrotherm decision said that this isn't sufficient, and the court took that as precedent.
It's somewhat likely that the court asked them to provide better material a couple of times as that's what courts tend to do. With that ruling they handed it off to the appeals track.
My guess would be less that it was "politically motivated" but that it was a response to something perceived as "contempt of court"-style behavior.
It may be petty, but McD was engaging in such lawsuits sufficiently often as applicant against other parties' marks that they should know how to navigate the process.
The standard McD's defense needed to meet was "establish[...] whether commercial exploitation of the mark is real".
"However, the purpose of the provision requiring that the earlier mark must have been genuinely used ‘is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks’"
So the use of the trademark needs to have had some meaningful effect for the commercial activities of the mark's holder, even if unsuccessful or in a niche market.
They sent as materials:
1. A signed statement by UK/FR/DE managers how this mark is important and in use.
2. menu templates with no prices, and no information where and when these are used, and how their circulation looked like
3. packaging material with no information where and when these were used
4. marketing materials, incl copies of their websites, again with no prices, time frames, distribution data
5. sales numbers: "more than 75 Million per year" (not mentioned: where, and why)
6. a wikipedia article (might have been edited by McD or their counsel and reverted immediately by another editor)
Based on that data, a reasonable scenario could be: 10 corporations across the UK/FR/DE region ordered a total of 350000 sandwiches per work day from McD for their workforce, served from their cafeterias. That's the >75M items sold. Since they didn't care what kind of sandwich, McD sent Big Macs. Impact of the trademark: 0. The packaging and marketing material might have been internal prototypes that were never used. Impact of the trademark: 0.
From reading the decision, McD never bothered to make the case that any of that material they brought up as defense mattered in any way. The strongest one on its own was probably the "yes, Big Mac is important to us, pinky swear!" testimony by the managers, but the inherent conflict of interest reduced its impact quite a lot. The other ones? Yeah, sheets of paper or cardboard with "Big Mac" on it - so?
If McD doesn't care enough to mount a useful defense, why should the EUIPO care? It doesn't have to protect trademark holders from their own active malcompliance.
The USPTO handles trademark matters in a similar fashion, by the way: USPTO TBMP 803 states "Rather, one judge is assigned to read the testimony and examine the other evidence of record, discuss the case with the other judges, and then draft a decision and supporting opinion.", so they also decide only by the evidence that is on the record, with no requirement to take into account "common knowledge" or anything like that to help any side of the dispute (IME courts do give hints that you could ask for $keyword at $office or that $paperwork might help provide a clearer view onto the matter, but I don't know how EUIPO handles that).
Of course, there's an appeals process, and McD will take it, and they'll exercise more care in making their case this time around, and the mark will likely be reinstated for sandwiches and potentially also for animal based food.
The EUIPO treats McD the same as they treated Centrotherm, even though they're very different companies in every way. Just like they're supposed to. They might consider such consistency more important than the question if a sandwich's name has legal protection or only de-facto protection (by everybody actually knowing about it belonging to McD, plus its non-EU trademarks) for a short period of time in 2019 until appeals are done.
curious, on Appeal, are you allowed to submit new evidence? Or will McD claim that the court failed to look at it. On one hand, if you sold tens of (edited: Millions) of Big Macs a year something is there, use in commerce.
This isn't bullying a tiny competitor. McD's would have no problem with a company called "SuperBurger" instead of "SuperMacs". They want to protect their customers from potential confusion.
Supermac's have been doing business in Ireland since 1978. They are a household name with over 100 restaurants. The chain is named after the founder, Pat McDonagh. The burden of proof lies with McDonalds to prove that there is a significant risk of confusion; Neither I nor the EUIPO are persuaded of that.
> The decision says Mcdonalds submitted 3 affidavits, brochures, menus, packaging, and SALES FIGURES of Big Macs in Europe... and the EUIPO said they don't believe any of it.
The articles I could immediately find in English were pretty bad at elaborating on this point (although others have posted links to better ones), but I found a decent one in Danish.[0] (Where they actually interview an expert!)
It explains the EUIPO decision. Specifically that documentation released by the company themselves has limited value to the EUIPO, and a Wikipedia article unfortunately cannot be trusted (the company could just have edited/created it). Had McDonald's provided newspaper articles as evidence (of which there are plenty!), then the EUIPO would probably have settled the matter differently.
But since their only non-McDonald's documentation was a Wikipedia article, it really sounds like they didn't bother.
> If I had a trademark in europe, I would be worried.
Especially given that the final resort of "walk into a store and buy one and present it to a judge" is impossible for, say, enterprise software shops that build nominally custom variations of their product for each client.
If you're producing variations of Wibbleworths Customer Management System for a variety of clients and marketing them all under the Wibbleworths brand, that's absolutely something that should be trademarkable.
Looks like you need independent evidence before the EUIPO and McDs legal team only came up with their own sources, plus Wikipedia. Had they only presented the 'Big Mac Index', I think it would have been enough?
" In other words, it doesn’t even matter if everyone knows that McDonald’s sells burgers called Big Macs: There are ways to prove it, and McDonald’s didn’t bother. Don’t tell us, show us. There are rules, Ronald, and you will follow them."
I can see the logic behind that. If Uncle Bill's Bait Shop's printout is not good enough, should McDonald's menu be?
I can't see the logic. McDonald's submitted multiple affidavits, brochures, menus, packaging and actual sales figures. What else could they possibly do to prove a trademark is being used?
If that's not enough to prove the use of a trademark, then the value of registering a trademark in Europe has plummeted to zero.
I think they require some 'independent' source of information, like news articles. I'm quite surprised by the comments on this article. McDonald's didn't present their case properly while that should have been easy. Seems the onus is on them, regardless they still have their appeal.
They provided an independent source of information. You say it should have been easy yet nobody has been able to articulate exactly what they should have done. It's not like the lawyers were being lazy; the information they did supply was quite detailed and would have taken substantial effort to collate.
Here's a better link from a collective of European IP lawyers. The point is that McDonald's was assuming it would be treated differently than any smaller company, and also that the Big Mac trademark might have been too broad to begin with, but this was not the decisive factor.
Am I the only person who sees privacy pages on sites like this - where they say 'accept our conditions and cookies' and there seems to quick way to make settings that you're happy with - and then presses the back button, adding that domain to an internal list of sites I won't visit again? Any time I see any Oath-owned domain, I know that it'll be difficult/impossible to set what I want, so I don't even bother any more.
OTOH, you you are irish and your surname is McSomething (which naturally reads as "mac-something") then you should be free to use that as branding. It's literally who you are and who yo've been your whole life, and your ancestors before you.
This ruling doesn't inspire a lot of confidence in fair treatment for foreign companies in Europe. Its one thing if this was a default judgement because McDonald's was boycotting the proceedings, but they filed a good faith response.
If McDonald's is a bullying litigant - there are ways to deal with it that don't bring the court itself into disrepute.
In the contrary, it shows that both big and small companies are treated equally. What would not have been enough for a less known company was also not enough for Mcdonald's, shcih simply didn't make the effort to submit outside evidence. The judgement was a bit legalistic in so far as common sense would have said 'obviously McD sells Big Macs' but it's simply that they didn't submit the right kind of evifencr. From other articles McD seemingly was acting like a trademark bully in registering it's competitors' product names - meaning they (presumably less known outside Ireland) had to provide objective evidence. It's only right that the burden of proof is applied equally to all, McD shot itself in the foot, first in causing this issuey first by filing frivolous trademarks and trying to block a competitors entering the markety causing the whole process, and then by not making the effort to submit the right kind of evidence. No one else is to blame and this is a huge e endorsement of the fairness of the EU trademark system.
They can appeal so it will all be a non-story in a while.
Why do you assume the problem is with the EU and not with McDonald’s? The people who judge the matter have clear rules to follow, rules that McDonald’s lawyers are intimately familiar with. And yet they messed up. Is it some grand conspiracy against foreign companies or an arrogant multinational that is used to rules not mattering to them?
I don't really see why the author thinks this is so funny. While I have no love for giant corporations, I do have a strong distaste for government pushing people around like that. There is nothing more frustrating than having to spend a fortune on lawyers just to deal with the government, rather than adding any value to the product.
I do wonder a bit, if this isn't meant to be a protectionist show move from the EU demonstrating (particularly in the wake of upcoming brexit) that there are benefits to staying in the EU... although I prefer to apply Hanlon's Razor liberally.
McDonald’s previously hit Supermacs with a 41-page objection against its plans to use the Supermac’s name in Europe stating that it would "take unfair advantage of the distinctive character and repute" of trademarks previous won by the global restaurant giant.
The US firm partly based its objection on already secured trademarks for its products such as the ‘Big Mac’ and ‘Chicken McNuggets’, claiming introducing Supermac’s into the market would cause confusion.
If McDonald's genuinely thought Supermac's expansion would cause customer confusion, then they're not only right to challenge it but they have a duty to challenge it in order to protect their trademark.
McDonald’s is famous for trying to sue a Scottish woman who started a sandwich shop in England called McMunchies, claiming that they owned any use of “Mc” to refer to food. Along with various other small clearly unrelated businesses with Irish/Scottish owners.
Which brought Lord Godfrey MacDonald, of Clan MacDonald, down on them (“I am The MacDonald”).
There’s something particularly egregious about large corporations trying trademark widely used generic words or terms.
Such behaviour is prohibited most places. That these companies try intimidating people with spurious law suits makes it easy to dislike them.
My own personal favourite is a dodgy gym eqipment company which has been recently bullying various blogers for using the generic term for a group of cyclists, peloton. They can’t have the word it belongs to common language.
It’s crazy. It’s like if McDonalds tried to trademark “hamburger” and then threatened to sue people who live in Hamburg.
Protection of a generic word within particular context may be absolutely fair. Say, you made an OS, and called it "Pretzel". You can't go, and prohibit anyone to call their pretzels pretzels, but if some big corpo Shmoogle will create their own product called Pretzel OS, I'm pretty sure you'll be not ok with it. "Mc" is no different, if applied narrowly to burgers there's no reason why it can't be copyrighted, because within the context it's not in fact a generic term. Crazy behavior of copyright lawyers is a problem for sure, but a separate one.
In the case of the gym manufacturer they've taken a word from the sport of road cycling, peloton from the French for platoon, and are now harassing anyone using that word to describe cycling related software.
What's particularly annoying is that their product is a spinning "bike" which has nothing to do with road cycling apart from pedalling. Specifically the Digital Peloton Vlog, which reviews cycling simulators and software.
In fact there is no duty to challenge. You can search the USPTO documents up and down and this is not considered during trademark disputes. It generally is a good idea, but whether you as a trademark owner prevent dilution or not is not your responsibility.
So no, McDonalds does not have a duty to do so, only an option.
I'm pretty sure that's completely wrong. Everything I've heard about trademarks says you must protect them or you risk losing them. There's even a wikipedia page on "Generic trademark" about the problem of trademarked items becoming generic terms and thus at risk of losing legal protection in the US: https://en.wikipedia.org/wiki/Generic_trademark
It's not the government. It's an independent agency that follows it's procedures correctly no matter whether it's a mom&pop shop or a global giant. McD caused the whole issue and then didn't bother submitting the right kind of evidence.
Seems like they submittet proof that they used the trademark in marketing materials, but no independent proof that they actually managed to sell even a single BigMac commercially.
The government didn't act like that, they followed their rules. From what I gather, they wanted independent evidence and McDonalds gave them brochures and data printed in-house.
If "everyone knows McDonalds sells Big Macs" is a good argument then it shouldn't be hard to find evidence that it indeed is so. It wouldn't have been hard, McDonalds just didn't bother to provide that for some reason.
If a small, young company would try to defend their trademark nobody would believe them even if they printed brochures, menus, and told "yes, we really really really do sell these". There's nothing of substance in such claims. Printing is cheap.
In most (all?) democracies a court of law is a branch of Government. In the USA the judiciary is described as being co-equal to the executive and legislative branches. It's largely the same in the European Union and Westminster-style governments.
Very interesting question, thank you! Requires some thought, and I'm still evaluating it.
Some initial thoughts are, that I tend to agree with you. On the one hand, I think the pragmatist view would be that society is benefited (through disambiguation of source, quality, etc. On the other hand, to equitably codify such a subjective mechanism (e.g. does it cause confusion in reasonable consumers?) is nearly impossible, and rather than risk unjust vertical empowerment of one entity (government) over another (citizen), I think I'd rather just not do it all (which is to your point).
Like many things, I suppose it comes down to questions of philosophical purity (and therefore morality) vs. pragmatic positions. I see myself as more of a purist than a pragmatist these days, but that may just be my natural inclination toward non-conformity (and all the governments I can think of are heavily tilted toward the pragmatic side).
I'm pretty low on IP in general but trademarks do serve a useful purpose: namespaces are rivalrous so it makes sense that the government be able to say, hey, you can't start selling low grade big Macs in your town and potentially give McDonald's a bad name.
It's not about "giving mcdonalds a bad name", it's about protecting me from buying what I think is mcdonalds (for some reason), but actually being sold something else.
As Pirate Party say:
"Trademarks are okay as long as they protect consumers from fraud, etc, but never okay when they punish consumers."
They're similar to rules protecting origin. If I buy Feta, it's guaranteed to come from Greece. This protects me. Nothing stops me from buying "greek style cheese", which comes from Italy, I have informed choice.
I have no opinion on Brexit, but I imagine this will shift more corporate resources out of the EU and into the UK. For the stability aspect alone. Business tends to hate uncertainty as do investors and this seems rather insane.
No it wont. Because you don’t understand the issue, you didn’t bother reading what happened. You just came here to shit on the EU for no reason but your own biases which you thought you saw confirmed in the headline.
What happened is something that is actually causing stability because a huge multinational was prevented from bullying a new upstart company.
No, OP is right. This isn't stability. By "stability" people mean government decisions are predictable and make sense, not that tiny EU companies can create big problems for major corporations by exploiting the bureaucracy.
What will CEOs of large American companies think when looking at this ruling? They will think the following:
"Everyone knows McDonalds makes a product called Big Mac. It's their primary burger product and has been a stable brand for decades. Europeans know this. I've been to Europe and eaten a Big Mac myself. Their usage of this brand should not have been in question to start with. Why was it in dispute? Then their lawyers submitted lots of documentation to satisfy the bureaucratic box tickers, and apparently that still wasn't enough. If a brand as big as McDonalds can't successfully keep their primary product trademarked in the EU, what chance do I have? Maybe I'll think twice before prioritising these markets."
Both FranzFerdiNaN and phatfish below weren't able to infer or comprehend what form of stability I was referring to. It's absolutely laughable, outright, to consider that I meant the EU or the nations that it consists of are "unstable". I don't care about the UK or EU, this is just an objective analysis of business realities.
It's the political expectations that matter. Threatening something as known as the Big Mac is begging for even worse parasitical behavior on the behalf of corporations. It's not going to encourage any investment into EU boundaries, other than what's required to siphon money out. It's the same thing as Trump disrupting trade arrangements with China. There's nothing offensive or aggressive about these observations unless the reader is defensive and has a bone to pick on their part.
Clearly you have no knowledge of Brexit either. If you think its making the UK more "stable" for businesses than the other countries that make up the EU.
McD’s lawyers screwed up, not submitting required evidence of actual use in years 2011-2016. They printed out webpages with promo materials and a wikipedia page (as article correctly points, “duh, we are McDonalds”) - not a great proof of anything for any court. Then submitted some packaging of the product.
Not any evidence that the product was actually sold and trademark used in those five years - no sales figures, website traffic stats… As said, makes sense to me
Edit: that said, still makes no sense why were they challenging the use of Big Mac in the first place… shrugs