It is a known fact that trade marks don’t only give exclusive rights to its owners, but also impose on them a certain amount of obligations. One of them is the requirement to make genuine use of the mark, in order to keep the registration alive. A trade mark will be lost if during a period of five years, the owner does not put the trade mark into use. Genuine use has been interpreted by the CJEU as requiring actual use on the market, in connection with the registered goods and services. In the case Ansul BV vs Ajax Brandbeveiling BV C-40/01, the court said that a mark should be “consistent with the essential function of a trade mark” in order to guarantee the origin of the goods or services to the consumer. The court continues and says that internal use by the undertaking concerned is not enough and that genuine use entails use on the market. If trade mark owners respect that obligation, they can keep their trade mark registration indefinitely. The reasoning behind this rule is that when a trade mark is not used, it does not fulfil its essential origin function. Protection is not justified if it does not allow consumers to identify the products origin. Instead of excluding others from using the mark, the sign should then be available for anyone to use it.
This obligation has recently been under scrutiny in the MacDonald’s case, in which the Cancellation Division of the EUIPO (European Union Intellectual Property Office) declared that MacDonalds has not used its word mark “BigMac”, which it owned since 1996 in classes 29, 30 and 42. The mark owner MacDonald’s provided multiple evidence to show genuine use, containing: (i) 3 affidavits, (ii) brochures and printouts of advertising posters, (iii) printouts from MacDonald websites and (iv) a printout from Wikipedia.
The Cancellation Division did not consider this evidence to be sufficient to establish genuine use. In particular, it explained in the decision that the mere fact that a trade mark is present on a website does not prove genuine use, unless the website also shows the time, place and extent of the use. What would have been deemed relevant evidence are the number of orders placed on that website for the relevant product; however, MacDonalds had not provided these numbers. The same goes for the brochures provided, as it was unclear if, and how orders were placed with the help of these brochures. Regarding the evidence on Wikipedia, it was considered that this website could not be considered reliable, as it did not provide any evidence of genuine use. The Cancellation Division concluded by stating that there was no proof of sales and therefore no prove of genuine use during the asked period.
Has the genuine use requirement turned into one of actual sales?
The decision by the EUIPO’s Cancellation Division can be considered surprising when we consider the notoriety of the trade mark Big Mac, and the reputation of MacDonald’s in the world. From the author’s point of view, the decision makes one wonder what interpretation the Cancellation Division of EUIPO gives to the concept genuine use. In fact, it can be considered contradictory to not recognize the use of a trade mark on websites and brochures used as advertisement as evidence, but require evidence related to sales. Would this mean that a company not having registered a single sale would lose its trade mark after having advertised the product? The EUTMR requires proof of use but the decision was based on proof of sales. By requiring proof of sales, the threshold is increased: first, proof of use is easier to collect than of sales. Second, an insufficient amount of sales could lead to the loss of a trade mark by its owner. It will be interesting to follow the proceedings. MacDonalds has appealed this decision and hence the outcome might change.
In the meantime, even with the appeal pending, this decision gives Supermac some good advertisement, despite the fact that they cannot use the mark Big Mac, which still owned by MacDonald’s. If the decision is not overturned, it will certainly boost Supermac, which might even expand in Europe. And as Burger King said after the decision this was “Kind of like a Big Mac but juicier and tastier”.