How the Big Mac was saved

In quite a remarkable decision of 2019, the Cancellation Division of the EUIPO had revoked one of McDonald's best-known trademarks, the BIG MAC, for reasons of non-use.

The trademark BIG MAC had previously been registered with the EUIPO for various food products in Classes 29 and 30, including sandwiches of various kinds, and for services in Class 42.

As any child knows that BIG MAC is one of the main trademarks of the McDonald's group in use all over the world, it does not require a detailed legal analysis to assume that the evidence filed in first instance was of modest quality (and quantity). Still, the Cancellation Division's assessment of the few documents submitted was not without error either.

This was recently confirmed by the Fourth Board of Appeal decision of December 14, 2022 (R 543/2019-4), which at least partially upheld the appeal of McDonald's International Property Company, Ltd. and confirmed as proven the genuine use of the BIG MAC mark in connection with food products consisting of meat and poultry products, sandwiches and restaurant services.

Interesting from our point of view is that McDonald's exercised its right to submit further documents in support of the evidence it had filed in the first instance. Pursuant to Article 27 (4) EUTMDR, the Board of Appeal may (only) take into account facts or evidence submitted for the first time before it if such facts or evidence are prima facie relevant to the outcome of the case and were not submitted within the time limit for valid reasons, in particular if they merely supplement evidence submitted within the time limit. Having affirmed this for the present proceedings, the BoA was able to assess the numerous further pieces of evidence submitted for the first time accordingly.

Whether this decision will stand remains to be seen: An action against the Board of Appeal decision is pending before the General Court (T-58/23).