What brand owners can learn from McDonald’s ‘Big Mac’ trade mark dispute

Recent case law has highlighted the importance of using a registered trade mark in order to maintain its registered status.

In the UK and European Union, a registered trade mark must be used in trade for all the goods and services for which it has been registered within five years’ of the date of registration and in every five year period thereafter.

Otherwise, a third party can file an action at the Registry to have the registration revoked in full or in part for any goods and services for which the mark has not been used.

Even, big, well-known companies are not immune to this requirement, as shown by the recent decision of the EU General Court concerning the fast food chain McDonalds and a rival Irish takeaway chain called SuperMac’s.

McDonalds owned a registered EU trade mark for Big Mac covering goods and services including meat, fish and chicken sandwiches and foods prepared from poultry products. However, SuperMac’s filed a trade mark revocation action claiming that McDonalds had not used the Big Mac brand for chicken sandwiches or foods prepared from poultry products. McDonalds filed some evidence of use of its Big Mac mark in respect of meat products, but this evidence was not enough as it did not indicate the volume of sales, the length of time during which the mark was used and the frequency of its use.

This decision does not stop McDonalds from using its Big Mac mark for other meat products, but it may open the way for other businesses such as SuperMac’s to offer a wider range of goods under a similar name. They would still need to prove that the public are not likely to be confused by their use of a similar name or that its use would not take unfair advantage of McDonald’s reputation and established goodwill in the Big Mac brand.

The case also highlights the need to give careful consideration to which goods and services you include in your trade mark registration application. Too broad a list may result in unnecessary revocation actions being brought by competitors seeking to trade in what might be a very different market to that in which you are using your mark in practice. Seeking the advice of a trade mark lawyer or attorney when preparing your registration application may result in cost savings in the long run.

You should also regularly review your trade mark portfolio and ascertain when you need to use your registered trade marks by and for which goods/services, in order to protect them from challenge. You can apply to the Registry to delete any unnecessary goods and services from your existing marks or you could licence your mark to a third party to exploit for some goods and services that you do not yet provide yourself, in order to keep the registration alive in full.