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07 Dec 2021
BY Gaelyn Scott

The Burger Wars

In this article, we look at two recent trade mark decisions, one in the Netherlands and one in the UK. Both involve what might be described as “burger marks”. Between them, they cover a lot of trade mark law.

burgers

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case one – what is “genuine use”?

The Dutch case has been running for some 20 years. What happened here was Wendy’s, the US fast-food chain, applied to register the name Wendy’s as an EU trade mark for fast food services. But a small Dutch snack bar called Wendy’s and situated in the remote Dutch province of Zeeland, stood in the way. The Dutch business has a Benelux registration for the trade mark Wendy’s, a registration that covers both fast-food services as well as foodstuffs. The US company responded by attacking the registration for non-use, claiming that the trade mark had not been used in a normal commercial manner. To put it in other terms, there had been no genuine use of the trade mark.

What makes this case interesting is that the trade mark had quite clearly been used for fast-food services, but not in the way that the US company seemingly thinks that a fast-food trade mark should be used. The use that was established, was used in relation to a single small snack food business. There was no proof of use in relation to a chain of outlets.

The Dutch Supreme Court held that this one-outlet use was sufficient to keep the registration alive. It made the point that in the Netherlands snack bar trade mark usage generally comprises small owner-run eateries rather than chains. The proof of use of the trade mark on the shopfront as well as on receipts and bags was sufficient. The fact that the trade mark had only been used in one of the three countries covered by a Benelux registration (the Netherlands, but not Belgium and Luxembourg) was not relevant.

The court did, however, feel that the situation was different insofar as the registration covers food products. The court held that in the Netherlands normal, genuine use of a trade mark for food products involves goods manufactured by large companies. This meant that the sale of individual Wendy’s hamburgers did not amount to genuine use of the trade mark Wendy’s. The upshot was that the registration was valid for fast food services, but not for food products. (Acknowledgement to article).

case two - bad faith and unfair advantage

This UK case involved another fast-food giant, McDonald's. What happened here was that a company called Children’s Cancer Aid Limited applied to register the trade mark McVegan in the food classes, an application that covered vegan sausages and vegan burgers. Unsurprisingly, McDonald’s opposed the application.

bad faith

McDonalds opposed the registration of the trade mark application on various grounds. One of these was the claim that the application had been filed in bad faith. There was evidence that the applicant had previously applied to register the trade mark McBaileys, an application that had been successfully opposed by Diageo, the company that owns the brand Baileys Irish Cream. So the applicant had a history of copying well-known trade marks.

Perhaps more importantly, there was evidence that the applicant had approached McDonald's prior to filing its application for McBaileys, with a view to establishing some sort of partnership arrangement - when this approach was rejected the applicant bizarrely threatened to open a McVegan next to every McDonald's outlet in the UK, suggesting that it would manage this by partnering with competitors of McDonald's.

Unsurprisingly the hearing officer had little hesitation accepting that the application had been filed in bad faith.

unfair advantage

McDonald's also claimed unfair advantage, in other words, it argued that adoption of the trade mark McVegan would take unfair advantage of, or be detrimental to, the distinctive repute or character of the registered trade mark McDonald's.

The hearing officer accepted that the Mc trade mark family is well established, citing McChicken, McNuggets and McCafe. The hearing officer accepted that the UK public will probably believe that any food trade mark that has the prefix Mc is connected with McDonald's. The public will almost certainly believe that the trade mark McVegan is part of the Mc family.

The hearing officer went on to say that even if the goods or services to be registered under the trade mark McVegan are dissimilar to those offered by McDonald's, the McDonalds trade mark will still be brought to mind. As a result, the McVegan trade mark will take unfair advantage of the earlier McDonalds trade marks. The public will assume that there is some economic link between the owners of the McVegan trade mark and McDonald's. This assumption will provide the owner of the McVegan trade mark with a clear benefit, in the sense that it will make it easier to get its brand up and running. (Acknowledgement to article).

As mentioned at the outset, two decisions with a great deal of content. Or perhaps burgers with a lot of filling!

 

 

Gaelyn Scott

Head of department | IP

gscott@ENSafrica.com

+27 83 632 1445