Arjen Schram, 17 June 2024

Everyone is allowed to sell Big Macs from now on! Or aren’t they?…

Last week, I saw an article of nu.nl in my LinkedIn feed with a title that caught my attention:“Anyone can sell a Big Mac (with chicken)“. When I then Googled I found several more newspaper articles with similar headlines and text. For example, NRC writes:“Anyone may now sell a ‘Big Mac’ if it is a sandwich with chicken“. And the AD writes: “Any burger baker may use the name Big Mac“. In case reading these headlines made you think “that sounds like a gap in the market!”, I advise you to read on quickly.

The newspapers seemingly draw this conclusion based on a recent European Court of Justice ruling. In it, the court ruled that the European Union Intellectual Property Office (EUIPO) was right to declare the trademark “Big Mac” lapsed for food prepared with poultry and sandwiches with chicken. However, how the various newspapers came to the conclusion on that basis that any burger baker can now sell his (chicken) burgers under the “Big Mac” brand is mystery to me. To prevent a lot of burger bakers from receiving a writ of summons from Ronald Macdonald in the near future, I think it would be good to dispel this myth of the quality newspapers in this blog.

The Big Mac trademark

On 1 April 1996, McDonalds filed the trademark “Big Mac” as a European Union wordmark. And whether you love or hate it, almost everyone will be familiar with the famous burger and its trademark. There is even an actual (somewhat playfully intended) economic index named after it – the Big Mac index – which was conceived by The Economist in 1986. After all, the Big Mac is sold almost everywhere in the world and contains roughly the same simple ingredients everywhere. A very strong trademark that many trademark owners can only dream of. Perhaps the trademark is almost as strong as the trademark owner’s own name registered as a trademark.

Goods and services

A trademark is always registered for specific goods and services. Thus, this also applies to the trademark “Big Mac”, which was registered in 1996 for, among other things, foods prepared with meat in general, but also for foods prepared with specific categories of meat, namely pork, fish and poultry. In addition, the trademark was specifically registered for sandwiches containing meat, fish, pork and chicken. Ironically, not specifically for sandwiches containing beef; while in practice the Big Mac is prepared with beef (India aside, but the burger has a different name there). The trademark was additionally registered for a wide range of other ingredients, including preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles, desserts, biscuits, biscuits, biscuits, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings and sugar.

Declaration of revocation

There is an obligation on trademark owners to put a registered trademark to genuine use in relation to the goods and services for which it is registered. If a trademark owner fails to do so for a continuous period of five years, it risks revocation its trademark under Article 58(1)(a) of the European Union Trade Mark Regulation. Where a trademark owner takes action against an alleged infringer, the alleged infringer has the option of filing a counterclaim for revocation.

And this is what happened in 2017. An Irish burger restaurant called Supermac’ s got caught up in proceedings in which McDonalds invoked its “Big Mac” trademark. Supermac’s responded by filing a claim for revocation of the Big Mac mark. This was because, according to Supermac’s, McDonalds was using its trademark exclusively for the famous beef sandwich – which was not included in the trademark registration. The EUIPO went along with that argument and declared the revocation of the “Big Mac” trademark.

Fourth Board of Appeal

McDonalds appealed, arguing first that beef and chicken fall under the broader categories of meat and poultry. Moreover, it would have actually sold burgers containing both beef and chicken in the past five years. It presented very substantial evidence for this. To substantiate the sale of chicken burgers, it recited that, among other things, it allegedly sold a Big Mac in France that was prepared with chicken meat, as allegedly shown in the Facebook screenshot below.

The Fourth Board of Appeal ruled on 14 December 2022 that chicken meat does indeed fall under the broad category of poultry. Moreover, the evidence submitted would show that the trademark was indeed normally used for sandwiches prepared with beef and chicken meat. The decision to declare the trademark’s complete revocation was therefore reversed.

Normal use for sandwiches containing pork and fish, as well as all the other ingredients mentioned earlier, was not accepted by the Board of Appeal. While it is true that some ingredients were used in the preparation of the Big Mac, the Board of Appeal did not find it plausible that the public actually associates the trademark “Big Mac” with these ingredients. After all, no one talks about Big Mac vegetables, Big Mac cheese, or Big Mac pickles.

Court of Justice

The case eventually ended up in the Court of Justice. There, Supermac’s argued that the evidence previously submitted by McDonalds as far as the Big Mac with chicken was inaccurate. First of all, the advertising material supplied would only consist of drafts – as evidenced by the text “confidential” included therein. Drafts of advertising material obviously do not conclusively prove that a trademark is genuinely used in practice. Moreover, the screenshots provided by Facebook (including as shown above) would date from 2016; and thus fall outside the required five-year period. This, according to Supermac’s, did not prove that McDonalds had used its trademark for poultry and chicken sandwiches in the past five years. The ECJ agreed and rejected these goods.

Consistency

The consequence of the revocation is that the trademark Big Mac is no longer registered for food prepared with poultry and sandwiches with chicken. And that’s all there is to say about it. The fact that the trademark is no longer registered for food prepared specifically with poultry and specifically for chicken sandwiches does not mean that the trademark can therefore be freely used by anyone wishing to sell chicken burgers under the “Big Mac” trademark.

First of all, beacause the trademark is still registered for foods prepared with meat in general. When a court considers whether there is a likelihood of confusion, it will still take into account that meat and chicken are complementary to each other. The greater simply includes the lesser. The trademark registration may have become less specific, but that does not mean that the trademark has thereby lost its protection entirely in respect of the more specific goods that have been crossed out.

Trademark with a reputation

Moreover, McDonalds has another important legal ground to act against parties using the “Big Mac” trademark (or trademarks that are similar). The trademark is considered to be a trademark with a reputation. And such trademarks enjoy a very broad protection under Article 9(2)(c) of the European Union Trade Mark Regulation. In fact it does not even matterr for which goods or services an identical or similar trademark is used. As long as this causes confusion and where the use without due cause of the trademark would take unfair advantage, or be detrimental to, the distinctive character or the repute of the trademark. There is no doubt that this would be the case if anyone other than McDonalds were to use the “Big Mac” trademark for other goods or services. Be it chicken burgers or flip-flops. The Dutch newspapers quoted earlier have drawn a conclusion that (at least in terms of trademark law) is not based on anything.

Conclusion

Were you planning to start selling Big Macs prepared with chicken tomorrow? If so, you would be wise to reconsider your business plan. There could be an angry clown at your doorstep in no time… Of course, you can then still try to recover your losses from one of the quoted Dutch newspapers.

Questions?