Supermac's (Holdings) Ltd, applied to cancel McDonald's International Property Company, Ltd.'s European Union Trade Mark Registration for 'Mc' *. Supermac's attacked the 'Mc' registration on the basis that it had not been genuinely used in the five years since it was registered.
Supermac's April 2017 cancellation application was successful in most part and the registration of 'Mc' was cancelled except for chicken nuggets and edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches. The 'Mc' registration that remains is for a substantially limited description compared to what the mark was registered for **. McDonald's lost the registration for its restaurant services, and a variety of foods and drinks. This decision is likely to be appealed and the outcomes may still change.
This is not the first challenge in recent times by Supermac's to McDonald's EU trade marks. Supermac's similarly attacked McDonald's European Union trade mark registration for 'BIG MAC' earlier this year and had it fully cancelled (the decision is now under appeal). But what is different here? The element 'Mc' was never used independently so how was the evidence McDonald's provided enough to prove use of the registered trade mark at least for some of the products?
McDonald's submitted evidence of use of 'Mc' with some descriptive suffixes like 'rib', 'muffin', 'toast', 'fish', 'wrap' and 'nuggets'. The question was whether the evidence showed use of the registered trade mark 'Mc' in a form that did not alter its distinctive character.
Non-use for a continuous five year period can leave a registration vulnerable to a non-use challenge. Genuine use has to relate to the trade mark as registered and to the goods/services covered by the registration. Whether a trademark is genuinely used is a complex analysis. Regardless of how well known the mark may be, the European Union Intellectual Property Office (EUIPO) will not presume use. If there isn't comprehensive evidence to show that the trade mark has been commercially exploited the registration could be cancelled.
Supermac's had argued that the evidence was insufficient but conceded that at best it showed genuine use only of foods prepared from poultry products, edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, coffee, coffee substitutes, tea, pastries, desserts being ice cream in Classes 29 and 30. The EUIPO asses' proof of use independently to the parties' assessment of the evidence and considered that use was in fact supported for a much narrower list of goods.
McDonald's produced evidence of use of its trade marks 'McDonald's' (restaurant services), 'BIG MAC' (beef, salad and cheese sandwiches), 'McRIB' (pork sandwiches), 'McMUFFIN' (sandwiches of eggs, bacon sausage, salad, cheese), McTOAST' (sandwiches of ham, cheese, bacon or chocolate), 'McFISH' (fish sandwiches) and 'McWRAP' (wraps with chicken and salad) in Germany and France and 'McNUGGETS', 'McCHICKEN', 'McMUFFIN', 'McFLURRY' and 'BIG MAC' in the UK for 2011 to 2016. McDonald's also produced evidence of various other 'Mc' prefixed marks in other countries of the European Union including 'McCafe', 'McSundae', 'McBaguette', 'McFreeze', ‘McPOLLO’, ‘McKroket’ or ‘McCruncher’ for foods and coffee/coffee-based beverages, water, soft drinks.
The EUIPO considered that the evidence did not establish genuine use for ‘McCroissant’, ‘McMorning’, ‘McBaguette’, ‘McCurrywurst’, ‘McMenü’, ‘McCafé’, ‘Mc your own’, ‘McSundae’, ‘McB’ or ‘McShaker’. There was not enough information as to the use of these marks in the EU territory and for the goods/services concerned.
The evidence provided for ‘McDonald’s’, ‘BIG MAC’, ‘McRIB’, ‘McMUFFIN’, ‘McTOAST’, ‘McFISH’, ‘McWRAP’, ‘McNUGGETS’, ‘McCHICKEN’ and ‘McFLURRY’ was considered sufficient. However, the EUIPO rejected McDonald's arguments that use of 'McDonald's' was broadly equivalent to the use of 'Mc', the use of 'McFLURRY' was equivalent to 'Mc' or that the 'MAC' in 'BIG MAC' was broadly equivalent to the use of 'Mc'. But what the EUIPO did accept was that each of the suffixes 'rib', 'muffin', 'toast', 'fish', 'wrap' and 'nuggets' would be seen as purely describing the goods on which they were used. Therefore use of these suffixes with 'Mc' would mean that the 'Mc' part of the words would be perceived separately in these marks. This was acceptable genuine use of 'Mc' without altering its distinctive character. Since the use of 'Mc' in the form of these conjoined words was shown only for sandwiches containing various types of pork, chicken, beef and fish and for chicken nuggets, the registered trade mark was allowed to remain on the register for these limited goods.
The 'Mc' use is not atypical. It is not uncommon for registered trade marks to be used somewhat differently compared to how they are registered. In the case of registered marks that are used with added descriptive/non-distinctive elements the use might be considered genuine if the added elements do not take away from the registered element. Registered trade mark owners should remain vigilant as to how they use their marks in the market and whether they are used in connection with the goods and services covered by the registration.
* EU Cancellation No.14787C
** The specification of goods and services of the European Union Trade Mark Registration No. 010392835 'Mc' as granted:
Class 29: Foods prepared from meat and poultry product, foods prepared from pork and fish products, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles.
Class 30: Biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar; desserts.
Class 32: Non-alcoholic beverages, syrups and other preparations for making beverages.
Class 43: Restaurant services.