Trademarks: What’s in a Big Mac?

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Few businesses enjoy the global success and brand recognition of McDonalds and there is nothing more synonymous with the fast food giant than their very own Big Mac. At least that was what was once thought except that McDonalds, in a recent trademark challenge, lost their EU trademark for the words ‘Big Mac’.

An Irish restaurant named ‘Supermac’ made an application to register a trademark in its name which was rejected due to the similarities with McDonalds’ trademarks including their word mark Big Mac.

As a result, Supermac filed a request for revocation for the Big Mac trademark, citing that McDonalds’ hadn’t kept the trademark in continuous use for the past 5 years. Such a contention seemed unlikely, however, it all turned on the evidence which McDonalds submitted in an effort to prove their use.

Their evidence consisted of affidavits from employees and literature including screen prints of their website with their trademark on as well as a copy of a Wikipedia page. The court held however that the evidence provided fell short on proving continuous use for the following reasons:

the real commercial presence of the mark and/or the extent of its use including evidence showing commercial transactions had not been evidenced;
the places, times and amount of usage of the mark had not been evidenced; and
in regards to the use of the mark on the website, no visitor statistics had been provided to evidence the prominence of the mark in consumer’s minds.

This led the court to conclude that whilst McDonalds had shown they had used the mark, the extent of its use and impact upon consumers was left to ‘probabilities and presumptions’.

Trademarks operate as a ‘badge of origin’ to identify your goods and services from that of your competitors however it is vitally important that your trademarks are kept in continuous and quantifiable use.

If you use your trademarks on your website, consider implementing analytics on your website and keeping a backup of visitor data so that you can prove the degree of exposure your trademark has had to consumers. If you do implement website analytics however, ensure that you also adhere to the requirements under GDPR.

Equally, if you run a marketing campaign, ensure you complete a post-campaign report to quantify the reach of your marketing including tracking consumer interactions if possible. This will ensure that, should your trademarks be the subject of an application for revocation, you’ll have strong quantifiable evidence to rebut assertions that you haven’t used the mark continuously.

Should you have to face a challenge against any of your intellectual property rights or wish to enforce your IP rights then please do not hesitate to contact us and a member of our team will be in touch.

If you have any questions regarding your ownership of intellectual property or complaints about its misuse then please don’t hesitate to get in touch with Tom Bailey on tom.bailey@ashtonslegal.co.uk or 01603 703090.

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