What can brand owners learn from the BIG MAC case? Our legal trainee Julia Koikkalainen compiled a blog about the use evidence challenges of the iconic trademark in the European market.

Na na na na naa. Not loving it, thought McDonald's in 2019 when it lost its legal dispute No 14 788C considering the BIG MAC trademark rights within the European Union. Now in 2023, the board of appeals by EUIPO has annulled its earlier decision and McDonald`s may enjoy its sweet (or rather salty) victory over winning the trademark dispute. McDonald's has thus retained its exclusive right to the BIG MAC as a brand name for hamburgers in the European market. However, BIG MAC was never completely threatened, because McDonald's has also other registrations for its brand in Europe. 

Vive la BIG MAC!

Trademark rights can be annulled based on non-use

How did we get here though? In short, in 2019 McDonald´s failed to prove that the trademark BIG MAC was in actual use in the European Union. By Article 58(1)(a) EUTMR, if the trademark holder has not used the trademark within the last five years, can the trademark be annulled.

The EUIPO considered that even if the trademark holder had provided hundreds of pages of proof of the use of the trademark in their internal system, it did not prove well enough the actual and active use of the trademark. The trademark holder should have, for example, provided the proof of commercial use of the specific trademark in their marketing, or visual images of the active use of the trademark within their franchising restaurants.

Due to the lack of valid evidence, the EUIPO made a conclusion that McDonald`s was holding the trademark but not using it, and therefore should lose the rights to it within the market of the European Union.

It is essential to systematically document the use of the trademark before disputes arise

The decision from 2019 may seem very much unexpected from a non-legal point of view. I would bet that 99/100 people on the street immediately connect BIG MAC with McDonald's when being asked about the association. And even if in this case the association of BIG MAC to McDonald´s or the lack of knowledge was not the reason for such a decision, it seems unreasonable and it possibly won´t fit into the sense of justice of an average Joe who just came here to enjoy their tasty delight.

In 2022 McDonald's hit a counter attack to the EUIPO by providing them over 700 pages of additional evidence of the actual use of the trademark within the European Union. This was enough for EUIPO and the BIG boy, MAC returned back to home. Now the trademark is owned by McDonald´s and well secured at least for the next five years, until perhaps a new legal dispute arises.

As Maria Puronvarsi (neé Ojala), a Partner of Kaulo & Partners, stated in Taloussanomat, the largest business online daily newspaper in Helsinki, “it is essential to protect the trademark in time and systematically document the use of the trademark even before disputes arise.”

Therefore, an important tip for the new companies in their early days is that they should most certainly protect their trademark beforehand and not wait until the milkshake has spilled to the ground. And even if the company would have been well settled in the market, this case, if any proves that even the most experienced companies need legal assistance in the area of trademark rights.

Author: Julia Koikkalainen, Legal Trainee, Kaulo & Partners