First it’s Batman v Superman. Now it’s BigMac v Supermac !

Aficionados of superhero movies may recall that in 2016, two of the greatest heroes of the DC comic universe faced-off against each other on the silver screen in “Batman v Superman”. The movie was a moderate box office success, raking in about USD873.6 million worldwide in ticket sales, making it the 7th highest-grossing film of that year.1
 
More recently, in a case that could have been aptly named “BigMac v Supermac”, US-founded multinational fast-food giant, McDonald’s International Property Co. Ltd (“McDonald’s”) faced off against local Irish takeaway chain, Supermac’s (Holdings) Ltd (“Supermac’s”), over the latter’s right to use the word “Supermac’s” as the trademark for its restaurants.
 
The relevant facts of this case are set out below.
 
The BIG MAC battle begins
 
This legal battle started in 2015, when Supermac’s applied to register its name across the EU. McDonald’s took the first strike by lodging an objection to the EU Office for Harmonisation in the Internal Market against two of Supermac’s applications. Part of the grounds of objection was that the application to register “Supermac’s” is likely to create confusion in relation to McDonald’s earlier trademarks such as ‘Big Mac’, ‘Chicken McNuggets’, ‘McMuffin’, ‘McFlurry’, and ‘McFish’. McDonald’s secured a partial victory in 2016 when registration for the restaurant name, Supermac’s, was granted, but not for many items of food and drink.
 
Supermac’s strikes back
 
The following year, on 11 April 2017, Supermac’s filed an application, formally cited as CANCELLATION No 14 788 C (REVOCATION), for non-use revocation with the European Union Intellectual Property Office (EUIPO) in respect of McDonald’s EU trademark registered under TM No. 62638 since 1996 in respect of the word mark ‘BIG MAC’ (“the BIG MAC Mark”).
 
The goods and services covered by the BIG MAC Mark were in Classes 29, 30 and 42 and are set out below:
Class 29: Foods prepared from meat, pork, fish and poultry products, meat sandwiches, fish sandwiches, pork sandwiches, chicken sandwiches, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles, desserts.
 
Class 30: Edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar.
 
Class 42: Services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods; the designing of such restaurants, establishments and facilities for others; construction planning and construction consulting for restaurants for others.
In order to show use of the BIG MAC Mark, McDonald's filed affidavits from representatives of McDonald's companies in Germany, France and the United Kingdom (“the relevant markets”). These affidavits contained evidence of significant sales figures in relation to 'Big Mac' sandwiches for the relevant period and exhibited, among others, packaging for sandwiches boxes from McDonald's, printouts and brochures of advertising posters in all three languages and printouts from McDonald's websites depicting 'Big Mac' sandwiches. Having reviewed the evidence, the Cancellation Division of the EUIPO held that there was a lack of data attesting to the extent of McDonald’s genuine commercial use of the BIG MAC Mark. In the Decision2, the EUIPO stated that “The methods and means of proving genuine use are unlimited. The finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that the EUTM proprietor chose to restrict the evidence submitted. As a result, the BIG MAC Mark was revoked in its entirety.
 
Appeal for a happi(er) meal
 
In March 2019, McDonald’s filed a notice of appeal with EUIPO under Case R 543/2019-4 against the decision of the Cancellation Division and submitted a significant amount of additional evidence supporting the extent of use of the BIG MAC Mark in the relevant markets. The evidence included, among others, a financial audit report from PricewaterhouseCoopers (PWC) comprising Big Mac units sold in the relevant markets, Google analytics data, consumer surveys on the degree of awareness of the term ‘Big Mac’ in relation to McDonald’s fast-food products and evidence of various marketing efforts.
 
In December 2022, the Board of Appeal of the EUIPO partially annulled the contested decision of the Cancellation Division and reinstated McDonald’s rights in the BIG MAC Mark in respect of the following goods and services:
Class 29: Foods prepared from meat and poultry products, meat sandwiches, chicken sandwiches;
 
Class 30: Edible sandwiches, meat sandwiches, chicken sandwiches;
 
Class 42: Services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods.
Final Snackdown?
 
Following the decision of the EUIPO Board of Appeal, Supermac’s took one final swing by filing a claim to the General Court of the Court of Justice (“General Court”) of the European Union (ECJ) and sought the partial annulment and alteration of the decision of the Board of Appeal. Inter alia, Supermac’s sought to further limit the protection of the BIG MAC Mark in such a way that the trademark was left to be registered almost solely for foods prepared from meat and meat sandwiches.
 
On 5 June 2024, the General Court’s issued its judgment, formally cited as T-58/23 Supermac's v EUIPO - McDonald's International Property (BIG MAC), holding that the McDonald’s no longer holds the BIG MAC Mark for chicken burgers and services rendered or associated with operating and franchising restaurants.
 
According to the General Court, “McDonalds has not proved that the contested mark has been put to genuine use as regards the goods chicken sandwiches, the goods foods prepared from poultry products and the services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods.
 
One should not misinterpret the General Court’s decision as McDonald’s ‘losing’ the BIG MAC Mark in its entirety, rather, the scope of protection is now somewhat limited.
 
The titanic battle between McDonald’s and Supermac’s may not necessarily have ended with the decision of the General Court. There is still the possibility of a sequel. Subject to obtaining leave, McDonald’s may, appeal the General Court’s decision to the Court of Justice of the European Union on points of law.2 
 
The legal position in Malaysia
 
As Malaysian lawyers, it would be remiss for us not to ask, what the legal position would be if the facts of this case arose in Malaysia?
 
EU trademark law relies on a “use it or lose it” system. A similar principle applies in Malaysian trademark law. The fundamental principle is that a trademark must be used or intended to be used for it to be registered. Otherwise, in Malaysia under sections 46(1)(a) and 46(1)(b) of the Trademarks Act 2019 (“the Act”), an aggrieved person may apply to revoke a registered trademark if:
  1. it can be shown that within a period of three years following the date of issuance of notification of registration, the trademark has not been used in good faith in Malaysia and there are no proper reasons for the non-use – section 46(1)(a); or

  2. the use of the registered trademark has been suspended for an uninterrupted period of three years and there are no proper reasons for such non-use – section 46(1)(b). 
In Oatly AB v Pahang Pharmacy Sdn Bhd [2022] MLJU 3042 involving a claim for revocation for non-use, the High Court held that following questions must be determined:
  1. Whether the applicant is an aggrieved person;

  2. Whether the offending mark has been used in good faith within a period of three years following the date of issuance of the notification of registration; and

  3. Whether there is any evidence of use during that period of three years or proper reasons for non-use. 
Similar to Article 58(1)(a) of Regulation (EU) 2017/1001 which stipulates that an EU trademark will be revoked if it has not been put to genuine use within the meaning of Article 18, interpretation of good faith in the Malaysian context is that 'good faith' means 'genuine', rather than 'honest' or 'without deceit or intention to defraud'.
 
Section 7 of the Act provides, in relation to use of a trademark, that references to use of trademark includes “references to the use of a printed or other visual or non-visual representation of the trademark and references to the use of the trademark upon, or in physical or other relation to, the goods or as a statement or as part of a statement about the services.
 
Section 46(4) of the Act further permits a registered trademark to be revoked partially only in relation to certain goods or services for which the registered trademark is registered. Hence, if Malaysian trademark laws were to be applied to the McDonalds vs Supermac’s battle, it is possible that the BIG MAC Mark could be revoked in respect of particular goods or services within the various classes of registration where the trademark has not been used in good faith within three years from its date of the notice of registration or there are no proper reasons for non-use for three years.
 
Comments
 
One key takeaway (no pun intended) from this David vs Goliath story is that no matter how big your brand is or how reputable your trademark is, if your trademark is not put to use for the goods or services that it is registered, there is a real chance that your trademark is vulnerable to be revoked.
 
An overly broad or wide trademark registration would not make sense in the long run and would be vulnerable to revocation. This would go hand in hand with balancing IP rights, fair competition and preventing monopolisation and exploitation of trademarks that are not put to genuine use.
 
In terms of evidence to substantiate use, whilst brand owners may be hesitant to share commercially sensitive data, particularly when this information may be revealed to a competitor, such failure to provide any evidence of advertising, marketing, sales, annual turnover or relevant foot-traffic data on social media platforms can ultimately result in the loss of a trademark.
 
Article by Alyshea Low (Partner) of the Intellectual Property Practice of Skrine. 
 
 

1 Source: Batman v Superman: Dawn of Justice; Wikipedia; visited 29 June 2024.  
2 See Article 256 of Treaty on the Functioning of the European Union and Article 58a of the Statute of the Court of Justice of the European Union.

This alert contains general information only. It does not constitute legal advice nor an expression of legal opinion and should not be relied upon as such. For further information, kindly contact skrine@skrine.com.