Do you know what a Big Mac is?
Do you know which company produces them?
Do you know that they are sold in Europe?
Chances are the answer to all those questions is a resounding yes. Even if, like me, you’ve never actually eaten one.
So it might come as a bit of a surprise if I tell you that McDonalds weren’t able to prove that they have used the Big Mac trade mark in Europe. As a result, the European Trade Mark Office have decided to cancel the trade mark registration.
Cancelling a trade mark
Once a trade mark is over five years old, it’s generally assumed that the owner will have started using it. If it hasn’t been used, and there’s no good reason for that, it can be cancelled. If it has been used, the owner can be asked to prove genuine use – that proof needs to be for each item covered by the trade mark registration, show more than just “token” use, and in the case of an EU-wide trade mark, the use must be in a significant proportion of the EU.
Supermacs, an Irish burger company, applied to cancel the EU trade mark registration for BIG MAC. McDonalds had to prove that they had in fact used the trade mark, in order to keep the trade mark registration.
You wouldn’t think that would be too tricky, I think we can all agree that it’s a pretty well-known brand throughout the world. So what was the problem?
McDonalds filed evidence which included 3 affidavits from employees of the company; samples of packaging; print outs from various national McDonalds websites from within EU countries; copies of menus showing the Big Mac offering; a print out from Wikipedia about the Big Mac.
The decision (which you can read as part of the official file here) reviews the evidence submitted and explains a little about why this wasn’t sufficient.
For a start, almost everything was internal. The EU IP Office generally like evidence to be independently verified and give independent evidence more weight.
Secondly, they were unimpressed that there wasn’t some data to support the evidence submitted. Copies of websites are all very well, but how many people visited the website? Where did those visitors come from? This is information that most businesses can get hold of relatively easily.
Thirdly, Wikipedia is not a source of evidence in itself because it can be amended by any of its users, the content can’t be relied on.
What can we take away from this?
If you’re in a situation where you have to defend your trade mark rights, evidence is key. I would always recommend that good record-keeping throughout is important so that if this crops up, you’re not faced with a monumental task to gather information and evidence.
Know your figures. Website hits, sales volume, sales value, market share, advertising spend, are all important. Be able to break those down by country, and by year.
Evidence. Save copies of any adverts that you place and know the date you placed them/how long they ran for. Alongside that, know the average circulation figures of those publications in the relevant countries, or website hits for those sites, or footfall in the areas for your posters. You should know this because presumably it was a driving factor in your decision to place the advert in the first place. If you don’t know it, the company you paid to do the advertising, or for the advertising space, should know this and be able to give you that information.
Press coverage. Keep copies and details of all press mentions. Again, circulation figures are handy to know. If people are talking about your brand, it’s raising awareness independently from you. For example, since 1986 The Economist has produced a “Big Mac Index”, using the price of Big Mac burgers in various countries as a way to compare the economies of those countries. Evidence from these kind of independent sources is really valuable.
Chances are you are already sitting on this information within your company, but it might be handled by various departments, or just in different folders. I would recommend finding a way to join this up centrally. And if you can’t, chat to your legal team about a way to keep this centrally for you.
If you’re a small company, this still applies. Would you be able to pull together that level of information on your brand if you were asked to? And could you afford the time to do this as a standalone task?
If you need some help with evidence gathering, streamlining your evidence collection process, or creating a process in the first place, please get in touch.