What can brand owners learn from the trademark dispute between American fast-food chain McDonald's and Irish Supermac's? Even a well-known iconic trademark can lose part of its scope of protection if the brand owner cannot provide sufficiently high-quality evidence of its actual use for all products and services covered by the registration.

Following a recent decision by the General Court of the European Union, the fast-food giant McDonald's partially lost one of its BIG MAC trademark registrations in the EU. The court found that McDonald's failed to provide sufficient evidence of the trademark's use as a commercial identifier for chicken hamburgers and fast-food restaurant services within the EU. Consequently, the trademark registration remained valid only for hamburgers made from beef.

A competitor can request the cancellation of a trademark due to non-use

For McDonald's—and other major brands—the ruling serves as a reminder that reputation and recognition do not guarantee the validity of a registration if a competitor challenges it and seeks to cancel it based on non-use.

In a dispute, the brand owner is obligated to provide detailed and comprehensive proof of the actual use of their trademark for the products and services covered by the registration in a specific geographical area. Trademark use cannot be proven with probabilities or assumptions.

"It is important to remember that trademark rights are based on the use of the trademark. It is common for companies to use trademarks as tactical weapons against their competitors, as demonstrated by this trademark dispute between McDonald's and Supermac's that began in 2017. Such situations should be anticipated in the brand rights strategy. Proper use of trademarks and the collection of high-quality and comprehensive material regarding their use are crucial components of every company's brand rights strategy," says our lawyer Maria Puronvarsi.

A brand rights strategy ensures that brand rights remain valid and increase in value

The BIG MAC case shows that even the owners of well-known trademarks cannot rely on the assumption that trademark rights will remain valid without systematic care of brand rights, proper use of trademarks, and diligent collection of evidence of use.

Therefore, companies of all sizes benefit from a brand rights strategy that ensures the strategic, efficient, and comprehensive management of the company's brand rights portfolio.

"We create practical brand rights strategies for our clients that also consider these aspects. As part of the strategy, we provide guidelines for the proper use of trademarks and the systematic collection of strong evidence by region. This way, brand owners can increase the value of their trademarks and ensure the preservation of these valuable exclusive rights," says Maria Puronvarsi.

Do you want to increase the value of your brand rights over the long term? Contact us!

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