In 2019 it made the global news: the European trademark registration of the word Big Mac was declared invalid. McDonald’s had failed to demonstrate that the Big Mac trademark was being used. In trademark law, the rule is that a trademark must be used to maintain your rights. If you do not use the trademark for a period of 5 years, your rights can be invalidated by another party.
Lack of good evidence
In 2019 Supermac’s, a leading Irish competitor of McDonald’s submitted a request to the European trademark office to have Big Mac’s trademark registration deleted for non-use. A rather silly request, you could say, because quite clearly, the Big Mac trademark is in use. But McDonald’s subsequently failed to provide proper proof of use, which means that at that point EUIPO had no choice but to cancel the registration. It was breaking news: the Big Mac trademark was no longer protected!
Anyway, things are different now. McDonald’s appealed and came up with more and better evidence of use. The ruling from 2019 was overruled, and Big Mac is just another well-protected European trademark again.
Oddly though, it’s more common than you might think: there are plenty of trademark owners who fail to provide good proof of use when requested, whilst the trademark is used normally. What lesson can trademark holders learn here?
Save and document examples of the use of your trademark. Make sure that the evidence shows the following as clearly as possible (1) where (territorial) the trademark is used, (2) when (date) it was used, and (3) the extent of the use (volume, duration, frequency).
Types of evidence
What kind of proof of use can you think of? This can be anything: packaging, price lists, brochures, invoices, photos of the product sold, publications in the media, website screenshots, website visitor numbers and of course, much more. Just start with a good file and documentation. Need help building your proof of use properly? We are happy to help you.