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05 Mar 2019
BY Delene Bertasso

The double Big Mac attack

The Big Mac case has enjoyed considerable publicity – many publications have reported on it, including World IP Review. The decision shines a spotlight on some important aspects of trade mark law.

In this case, an Irish company called Supermac’s applied for the cancellation of the EU trade mark registration for Big Mac (belonging to McDonald’s) on the basis of non-use. This registration covered classes 29 and 30 (the food classes), as well as class 42 (the class covering fast food services). The application for cancellation was successful, with the Cancellation Division of the European Union Intellectual Property Office (“EUIPO”) holding that McDonald’s had failed to establish genuine use of the trade mark Big Mac in the EU for a period of at least five years.

The Cancellation Division was very critical of the evidence that McDonald’s submitted, as is evident below:

  • although McDonald’s had submitted affidavits purporting to establish sales of Big Mac burgers, these affidavits were all from company employees. The EUIPO’s view was that “statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence.”;
  • while brochures and samples of posters advertising Bic Mac burgers had been submitted, there was no evidence of where they had appeared and who had seen them;
  • a print-out of the McDonald’s website had no evidentiary value because there was no proof of who had visited the site. The Cancellation Division’s view about evidence from websites is that: “The mere presence of a trade mark on a website is, of itself, insufficient to prove genuine use unless the website also shows the place, time and extent of use or unless this information is otherwise provided.”
  • a Wikipedia page on the Big Mac was disregarded because Wikipedia can be edited.

The Cancellation Division reminded the parties that it “is up to the EUTM proprietor to show such use in a manner which allows a reasoned conclusion to be made that the use is not merely token.” A partner of the law firm that represented Supermac’s conceded that McDonald’s “may well have made genuine use, but its evidence did not show it had.”

This strict approach to evidence of use comes as no surprise to South Africans. The South African Supreme Court of Appeal has considered cases involving non-use on a number of occasions. As a result, we know that:

  • the use put forward must be genuine in the sense that it must be “for the purposes of establishing, creating or promoting trade in the goods to which the mark is attached.” (Westminster Tobacco (Cape Town and London) (Pty) Ltd v Philip Morris Products SA);
  • there must be “clear and unambiguous factual evidence” of the use (Athletic Shoe Inc v Dajee and Others);
  • the evidence will be rejected if it is "not only vague to such an extent that it smacks of evasiveness, but is also contradictory."(A M Moola Group Ltd and others v Gap Inc and Others);
  • from the recent Morris case, that it must be quite clear which company in a group has used the mark. In this case, the evidence of use was rejected because it was “wholly unclear who was making use of the Morris mark in South Africa.” (Morris Material Handling Limited v Morris Material Handling SA (Pty) Ltd).

It’s been reported that the managing director of Supermac’s, Patrick McDonagh, described the McDonald’s judgment as a “vindication of small businesses everywhere that stand up to powerful global entities.” A portent of trouble to come? Trouble did indeed come, but when it came, it came from another fast-food giant, Burger King.
Burger King in Sweden decided to have “some fun” at the expense of its rival. It changed its menus to add new items. Under the header “Not Big Mac’s”, there were a number of interesting meals options: Burger Big Mac Wished It Was; Like a Big Mac, But Actually Big; Big Mac-ish But Flame-Grilled of Course. A company spokesman was quoted as saying: “McDonald’s just lost its trademark for the Big Mac for suing a much smaller player … it’s too much fun for us to stay away.”

In the days when McDonald’s had an EU registration for Big Mac, it might have responded to the Burger King stunt by at least considering legal proceedings based on dilution (sometimes referred to as “whittling away” or “blurring” of a trade mark), or even tarnishment (degradation) Actions based on these causes of action are available to the owners of prominent, well-known brands, even where there is no likelihood of consumer confusion.

In the UK case of Azumi Ltd v Zuma’s Choice Pet Products Ltd & Zoe Vanderbilt, the issue was whether an upmarket London restaurant called Zuma was entitled to use its trade mark registration to stop a pet food business using the name Zuma. The restaurant felt that such use could cause it harm even if there was no actual confusion. The judge found in favour of the restaurant on the basis that the power of attraction of the Zuma restaurant could be reduced by the presence of an identical dog food brand, potentially leading to a “change in economic behavior” on the part of the average consumer.

It is imperative for companies to register their trade marks, and ensure that their registrations aren’t cancelled on the basis of non-use. One way that companies can prevent this, is by keeping an accurate and ongoing record of the ways in which they use their trade marks in their businesses, with dated examples of such use.

Reviewed by Gaelyn Scott, head of ENSafrica's IP department.