In its judgment of 5 June 2024 (T-58/23), the General Court of the European Union ruled that the EU trademark "Big Mac" for chicken sandwiches and poultry products in Classes 29 and 30 and related restaurant services in Class 42 should be revoked after five years of non-use. This case demonstrates that even global brands are required to duly demonstrate that they are genuinely using their trademarks to designate specific goods and services.

The general rule in both European and Polish law is that the entity that has registered a trademark is not obliged to use it for the first five years after registration, without risking the loss of the rights and protection granted by registration. After this period, proceedings may be initiated before the competent office (in the case of EU trademarks, the European Union Intellectual Property Office) leading to the expiration of the protection previously granted to the trademark if the mark has not been used. The trademark owner must demonstrate circumstances such as the place, time, scope, and nature of use of the trademark in relation to the goods and services for which it is registered.

In 2017, Supermac's filed an application to invalidate the "Big Mac" trademark in connection with a number of goods and services. Supermac's, as it expanded its business in the UK and the EU, competed with McDonald's. It argued that the "Big Mac" trademark had not been genuinely used in the EU in connection with those goods and services for a continuous period of five years.

The European Union Intellectual Property Office (EUIPO) partially granted Supermac's application and invalidated the "Big Mac" trademark in relation to certain goods and services (including preserved and cooked fruits and vegetables, eggs, cheese, milk, pickles, desserts, biscuits, bread, chocolate, coffee, mustard, restaurant design and construction consultancy for others, etc.), but upheld the registration of the "Big Mac" trademark in relation to, among other things, foods prepared with meat and poultry products and meat and chicken sandwiches, as well as restaurant services and drive-through facilities.

The EU General Court, in turn, found that McDonald's had failed to prove genuine use of its "Big Mac" trademark in relation to "chicken sandwiches", "food prepared from poultry products" and "services provided or related to the operation of restaurants and other establishments or facilities engaged in the supply of food and beverages prepared for consumption and to drive-through facilities; the preparation of takeaway food ("drive-in")". According to the Court, the owner of the "Big Mac" trademark had failed to provide adequate arguments, in particular in terms of sales volume, the period of use of the trademark and the frequency of its use.

The above-mentioned judgment reminds us that even large entities that own well-known brands are obliged to provide specific evidence of the actual use of their marks in relation to the goods and services they protect.

This alert is for informational purposes only and does not constitute legal advice.

Legal status as of October 8, 2024

Paul Filipek

Attorney
+48 784 643 344 | p.filipek@kglegal.pl

Natalia Serwińska-Deles

Legal Counsel
+48 22 856 36 60 | n.serwinska@kglegal.pl

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