Supermac's v McDonald's: How Big Mac Lost Part of Its EU Trademark

By Imaduddin

Photo: UmbreOnline / Pixabay

It is hard to think of a more famous burger name than Big Mac. Yet in June 2024 the EU General Court ruled that McDonald's had not proved it used the BIG MAC trademark for certain goods and services in the European Union, and that part of the registration had to go. The case was brought by Supermac's, a fast-food chain from Galway in Ireland, and it became a textbook example of the "use it or lose it" rule.

How the case started

According to the General Court's press release, McDonald's registered BIG MAC as an EU trademark in 1996. In 2017 Supermac's asked the European Union Intellectual Property Office (EUIPO) to revoke the mark for some of the goods and services it covered. Its argument was that McDonald's had not put the mark to genuine use in the EU for a continuous period of five years in relation to those goods and services.

The EUIPO's Cancellation Division agreed in a decision of 11 January 2019 and revoked the registration. McDonald's appealed, and on 14 December 2022 the EUIPO's Fourth Board of Appeal restored much of the protection, including for meat and chicken sandwiches, foods prepared from meat and poultry, and restaurant and take-away services. Supermac's then took the case to the General Court.

What the General Court decided

In its judgment of 5 June 2024 in Case T-58/23, the General Court partly overturned the Board of Appeal. It held that McDonald's had not shown genuine use of BIG MAC for chicken sandwiches, for foods prepared from poultry products, or for the restaurant, drive-through and carry-out food services listed in the registration. As the court's press release explained, the evidence McDonald's filed did not show how much was sold, for how long or how often in connection with those goods.

The court left the rest of the registration in place, so BIG MAC remains protected in the EU for the meat-based goods for which use was shown. Each party was ordered to bear its own costs.

The lesson: fame is not proof of use

The striking point is that a mark everyone knows can still fall short when the owner has to prove use with documents. Advertising materials, packaging photos and website printouts helped McDonald's elsewhere, but the court wanted solid, objective evidence such as sales figures tied to specific goods. A broad specification is only as strong as the evidence behind each item on it.

The Indonesian angle

Indonesia has a similar rule. Under Article 74 of Law No. 20 of 2016 on Marks and Geographical Indications, an interested third party can ask the Commercial Court to remove a registered mark that has not been used in trade for a set number of consecutive years, subject to limited exceptions. The statute says three years, but Constitutional Court Decision No. 144/PUU-XXI/2023 held that the period must be read as five years. The well-known IKEA case in Indonesia turned on that kind of non-use claim. Brand owners should keep dated invoices, distributor records and sales data for each class and product they register, not just marketing material.

Sources

• Court of Justice of the European Union, Press Release No 92/24, "McDonald's loses the EU trade mark Big Mac in respect of poultry products" (5 June 2024)
• General Court, judgment of 5 June 2024, Supermac's v EUIPO – McDonald's International Property (BIG MAC), Case T-58/23 (EUR-Lex)
• JDIH BPK, Law No. 20 of 2016 on Marks and Geographical Indications (statute text and status, in Indonesian)