IP Law Daily, TRADEMARK NEWS: McDonald’s’ right to use BIG MAC trademark in Europe includes hamburgers but not chicken sandwiches, (Jun 5, 2024)

By Robert B. Barnett Jr., J.D.

The Court of Justice for the EU further restricted McDonald’s’ rights to use the BIG MAC mark in Europe by ruling that the mark applies only to “meat sandwiches.”

In an application for revocation filed by an Irish restaurant chain challenging McDonald’s’ use of the BIG MAC trademark in Europe, the Court of Justice of the European Union has annulled parts of a ruling by the European Union Intellectual Property Office’s Board of Appeal largely in McDonald’s’ favor, which has the effect of further curtailing McDonald’s trademark rights to BIG MAC in Europe. Under the Court of Justice’s ruling, McDonald’s can use the mark only to describe a “meat sandwich,” which does not include the right to describe a “chicken sandwich,” despite McDonald’s’ brief efforts in France in 2016 to offer a Grand Big Mac Chicken sandwich (Supermac’s (Holdings) Ltd. v. European Union Intellectual Property Office, No. T-58/23 (Court of Justice of the European Union June 5, 2024)).

Background. In 2017, Supermac’s, an Irish restaurant chain, filed an application for revocation with the European Union Intellectual Property Office (EUIPO) seeking revocation of the mark BIG MAC, held, of course, by McDonald’s. The three grounds covered by the mark are: (1) foods prepared from meat, pork, fish and poultry products, meat sandwiches, fish sandwiches, pork sandwiches, chicken sandwiches, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles, desserts, (2) edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar, and (3) services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods; the designing of such restaurants, establishments and facilities for others; construction planning and construction consulting for restaurants for others.

In 2019, the Cancellation Division within the EUIPO upheld the application and revoked McDonald’s’ rights in the trademark because there was no evidence of use of the mark. McDonald’s appealed the decision administratively.

The Board of Appeal annulled the Cancellation Division’s ruling and re-established McDonald’s’ rights in the following three classes: (1) foods prepared from meat and poultry products, meat sandwiches, chicken sandwiches, (2) edible sandwiches, meat sandwiches, chicken sandwiches, and (3) services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods. The appeal was dismissed regarding all other goods and services, which was a victory for McDonald’s, although the ruling significantly curtailed the original listing in McDonald’s’ trademark.

Supermac’s appealed that decision to the Court of Justice of the European Union. In its appeal, Supermac’s made five allegations: (1) the references to “meat sandwiches” and “chicken sandwiches” in the first class were unnecessary, (2) the reference to “chicken sandwiches” in the first and second classes was never established by continued use, (3) the reference to “foods prepared from meat and poultry products” in the first class was flawed because it did not constitute a homogeneous category, (4) the reference to “edible sandwiches” in the second class was too broad, and (5) all of the services referred to in the third class were never established by proof of continuous use.

Meat sandwiches/chicken sandwiches. Supermac’s’ first argument involved an allegation that the mark was wrongly registered in the first class because the second class broadly referred to any kinds of edible sandwiches, which includes meat or chicken sandwiches. Thus, Supermac’s argued, the first class should be revoked. The Court of Justice rejected that argument, noting that a superfluous designation does not cause the mark to be revoked if the mark has actually been used in connection with those goods.

Chicken sandwiches. Supermac’s next argued that the mark should not encompass “chicken sandwiches” because the evidence of genuine use that McDonald’s provided applied only to “meat sandwiches,” which was understood to mean “beef sandwiches.” The EUIPO had included “chicken sandwiches” in its order after concluding that McDonald’s had sufficiently showed continued use in the five-year period prior to the date that the application for revocation was filed by demonstrating that it offered a Grand Big Mac Chicken in France in 2016.

The Court of Justice rejected that conclusion, noting that McDonald’s only supplied printouts of advertising posters, screenshots of a television advertisement, and screenshots of a Facebook account that McDonald’s held in France in 2016. This evidence added together failed to produce key elements of any proof of continued use, including how many chicken sandwiches McDonald’s produced, with what regularity McDonald’s produced them, how widely they were distributed, and even what the sandwiches cost. As a result, the Court of Justice agreed with Supermac’s and concluded that McDonald’s had failed to establish continued use of the trademark as it applied to chicken sandwiches. Supermac’s application, therefore, was upheld to that extent.

Foods prepared. Supermac’s sought reversal on the ground that “foods prepared from meat and poultry products” was not a homogeneous category as required by case law. This argument was divided into two sub-arguments: (1) no proof existed of continuous use of the mark in connection with “foods prepared from poultry products” and (2) no proof existed of continuous use of the mark in connection with “foods prepared from meat products.”

As for food prepared from poultry products, the Court of Justice agreed for the reasons previously set forth. As for proof of food prepared from meat products, which might be interpreted to include chicken, the Court of Justice disagreed because it had been proven that McDonald’s had established continued use of “meat sandwiches.” This term is more commonly understood to refer to “hamburgers,” which is a subcategory of “meat sandwiches.” The trademark category of “food prepared from meat products” was not so broad as to require a listing of all potential subcategories. Because “meat products” was acceptable, “food prepared from meat products” was also acceptable.

Edible sandwiches. Supermac’s argued that the category of “edible sandwiches” was too broad to be registered because it covered every type of sandwich. The Board of Appeal had ruled that “edible” meant “eatable, fit to be eaten.” Because the Board had found that “meat sandwiches” and “chicken sandwiches” were covered, then edible sandwiches were covered as well. The Court of Justice agreed, at least as it applied to “meat sandwiches,” and it rejected Supermac’s argument.

Services. The final argument by Supermac’s involved an assertion that the services listed in the third class that the Board of Appeal used were not actually “restaurant services.” Instead, Supermac’s contended, they were business-to-business services, such as advice to franchisees. The Court of Justice agreed with Supermac’s that the Board of Appeal erred when it assumed that McDonald’s had established continued use of those services, which included designing and constructing restaurants. The Court of Justice made the same ruling as it applied to drive-through facilities and carry-out foods. Proof of continued use o the BIG MAC mark for hamburgers simply did not establish continued use of the services referred to in the third class.

The Court of Justice, therefore, partly annulled the Board of Appeals decision. The following rulings were annulled: (1) the part of the ruling that found that the BIG MAC trademark applied to “chicken sandwiches,” (2) the part of the ruling that found that the trademark applied to “foods prepared from poultry products,” and (3) the part of the ruling that applied to “services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities: preparation of carry-out foods.” All other parts of the appeal were dismissed.

The case is No. T-58/23.

Judge: Costeira, M.J.

Attorneys: C. Eckhartt, A. von Mühlendahl and K. Thanbichler-Brandl for McDonald’s International Property Co. Ltd. D. Stoyanova-Valchanova and V. Ruzek for EUIPO.

Companies: McDonald’s International Property Co. Ltd.

News: Trademark GCNNews