General Court finds BIG MAC was not used for services

In the BIG MAC trade mark saga opposing McDonald’s and Supermac’s, the General Court of the European Union has partially annulled and altered the decision of the EUIPO Board of Appeal.

In a previous piece, I reported on the appeal decision which had surprisingly recognised use of the BIG MAC mark not only to identify a sandwich but also to distinguish restaurant services. The Board of Appeal had recognised genuine use in connection with services on account of:

• the link existing on the part of the public between those services and the ‘meat sandwich’ in respect of which genuine use had been proved; and
• the fact that the fast-food restaurant services under the MCDONALD’S mark had a high degree of reputation.

This approach was condemned by the CJUE on the basis that it is contrary to case-law to find that (1) use in connection with goods could also prove use in connection with specific services, and (2) the reputation of a mark in respect of certain goods or services could have a bearing on the scale of use of another mark, on the pretext that the public could establish a link between those marks. 

The Court also found that the Board of Appeal erred in finding that the evidence was sufficient to prove genuine use in connection with ‘chicken sandwiches’. That evidence (printouts of advertising posters, screenshots of a television advertisement broadcast and screenshots from a Facebook account), does not make it possible to ascertain in what quantities, or with what regularity and recurrence, the goods were distributed. That evidence could not therefore suffice to establish that the commercial use in connection with ‘chicken sandwiches’ was real. 

However, the decision confirmed that the EUIPO was right in finding on appeal that the applicant, by furnishing undisputed proof of genuine use of the mark in connection with ‘meat sandwiches’, had also furnished proof of genuine use of the mark in connection with ‘foods prepared from meat products’. Indeed, the latter does not constitute a sufficiently broad category of goods for it to be necessary to identify within it subcategories in relation to which actual use had specifically to be proved.

The takeaway… here is that trade mark use cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of actual and sufficient use of the trade mark on the market concerned.

Even where the mark at hand is that of an iconic ‘flagship’ product, its use cannot be found to extend to that of complementary goods/services. Whilst this concept is relevant in the context of reputation, it should not be applied to the assessment of genuine use.