The Big Mac has been a ubiquitous part of U.S. culture for decades as the flagship burger of McDonald’s. Nonetheless, the same cannot be said for the European Union. The EU Intellectual Property Office (EUIPO) made this clear when it recently ruled that McDonald’s was not using the trademark in accordance with the EU Law. The ruling went into effect immediately.

According to the National Law review, the cancellation action is based upon Article 58(1)(a) of the EU Trade Mark Regulation (EU) 2017/1001 (EUTMR), an EU trademark can be cancelled where:

• within a continuous period of five years the mark has not been put to genuine use within the EU for the relevant goods and services for which it is registered; and
• there are no proper reasons for non-use.

McDonald’s used a variety of marketing materials to prove its case and also cited a Wiki page. However, the EUIPO was looking for other third party sources rather than marketing materials. According CNBC and others, the food giant plans to appeal the ruling.

The suit that prompted the ruling

The Irish fast food chain Supermac’s, which also sells burgers and fries, initially brought the suit. McDonald’s claimed that there would be confusion between the burger and the burger chain and used its Big Mac mark to try to get the company to change its name if it wanted a trademark in the EU.

Supermac’s responded with accusations of trademark bullying. It claimed that McDonald’s is using Big Mac to stop Supermac’s from tradmarking its name in the EU – the mark would help Supermac’s expand into the EU market.

IP laws vary

McDonald’s seemed to rely upon its global reputation and branding as a proof of the mark, but commercial success and company size may not be enough if the evidence is insufficient. It also is worth noting that experts believe that this is another step toward a strict interpretation of EU trademark law that requires use within most if not all of the EU member states for protection.

The strength and protections offered by Trademarks in other countries often differ. U.S. businesses with questions about international trademark issues should contact an IP attorney to better understand these issues and potential solutions.