6 ms·

McDonalds failed to provide sufficient data. They only provided tiny table of numbers for the UK, France and Germany. E.g. <quote>...the total number of product

by 1wd 8y ago

McDonalds failed to provide sufficient data. They only provided tiny table of numbers for the UK, France and Germany. E.g. <quote>...the total number of products sold under the Mark between 2011 and 2016 was in excess of (units in millions): 2011 2012 2013 2014 2015 2016 Big Mac 75 75 75 75 75 75 </quote> The numbers fail to cover the entirety of the relevant time period (2012-2017 inclusive), region (all member states of the EU!) and goods (e.g. sandwiches). They are also just self-proclaimed numbers with zero independent evidence to back them up. The EUIPO notification spells this out clearly on page 4. Sure, McDonalds should appeal and will probably overturn this, but not because the EUIPO made a mistake, but because McDonalds's lazy tactic to appeal to its marketing material. (After starting all this to bully a tiny competitor to keep them from expanding in the EU.)

coke12 8y ago
This isn't bullying a tiny competitor. McD's would have no problem with a company called "SuperBurger" instead of "SuperMacs". They want to protect their customers from potential confusion.
- jdietrich 8y ago
  Supermac's have been doing business in Ireland since 1978. They are a household name with over 100 restaurants. The chain is named after the founder, Pat McDonagh. The burden of proof lies with McDonalds to prove that there is a significant risk of confusion; Neither I nor the EUIPO are persuaded of that.
  - Proven 8y ago
    What's wrong with BigMc's?
onetimemanytime 8y ago
curious, on Appeal, are you allowed to submit new evidence? Or will McD claim that the court failed to look at it. On one hand, if you sold tens of (edited: Millions) of Big Macs a year something is there, use in commerce.
repolfx 8y ago
How was this lazy or the EU's ruling in any way sane or sensible at all? Do the people who work at EUIPO ever walk down a city street? Do they live in the real world at all? Why did they even ask McDonald to submit ANY proof that they sell a product called a Big Mac when there has been saturation level coverage of the entire fast food market with this product brand for ... well, I'm pretty sure I don't remember a time when the Big Mac did not exist. So at least as long as I've been alive. This appears to be a classic case of Kafka-esque bureaucracy, almost certainly politically motivated. No reasonable person would demand proof that McDonalds has a product called a Big Mac because if they've somehow lived in a cave for decades they could just walk down the street and verify it with their own eyes. The fact the the EU not only demanded this, but then rejected actual sales figures, marketing brochures and more as evidence, strongly suggests they wanted to whack McDonalds and nothing they could have submitted would have worked.
- hyperman1 8y ago
  There is some truth in this, but what happens next? Some other lawsuit for a smaller mark will rightfully complain how the burden of proof for bigcorps is now lower than for them. Where do you draw the line?
- pgeorgi 8y ago
  > Why did they even ask McDonald to submit ANY proof that they sell a product called a Big Mac when there has been saturation level coverage ... They asked because one of the classes the trademark was registered for (besides "animal based food product" and "sandwich" which are obvious) was "services to operate or franchise restaurants, or construction of restaurants, or consulting for constructing restaurants". This "services to operate or franchise restaurants" class was apparently used to keep SuperMac from expanding, and from the back and forth documented in the ruling, that was what they were really after. That class isn't sufficiently demonstrated by "we know they have a product by that name" since McDonald's has no "Big Mac stores". So the claim was that McD abused the trademark in a class they registered it for without using it in that class, and that use in another class isn't enough to hold it. Article 58(2) EUTMR states that a mark should only be revoked for the good or services for which it fell out of use, so they might have revoked it only for the "services for restaurants" class. As far as the sandwiches go, where "everybody knows McD sells Big Macs": They refer to the Centrotherm decision (http://curia.europa.eu/juris/document/document.jsf?text=&docid=109562&pageIndex=0&doclang=EN&mode=req&dir=&occ=first&part=1 http://curia.europa.eu/juris/document/document.jsf?text=&doc...) a couple of times, § 43 and § 46 in particular. These state that it's up to the trademark owner to prove use, and that probabilities or presumptions shall not be used (that might be unfair against the applicant). They applied that argument (which originally was made against a German company, so probably not "politically motivated" in the way you alluded to?) identically to McD's submission. The situation was nearly the same: as "proof" they offered material that merely showed that some sale probably has happened at some point in time. The Centrotherm decision said that this isn't sufficient, and the court took that as precedent. It's somewhat likely that the court asked them to provide better material a couple of times as that's what courts tend to do. With that ruling they handed it off to the appeals track. My guess would be less that it was "politically motivated" but that it was a response to something perceived as "contempt of court"-style behavior. It may be petty, but McD was engaging in such lawsuits sufficiently often as applicant against other parties' marks that they should know how to navigate the process.
rgbrenner 8y ago
Honestly, this makes me more concerned: 1) On UK, France Germany data: are you saying that EU trademarks must be used throughout europe in order to be valid? So supermac for example doesn't have a valid EU trademark because they operate only in ireland? 2) Self proclaimed numbers: I'm not aware of any reporting requirements for specific product lines. They're not reported for tax purposes.. just the overall company revenue/profits/etc. If McDonalds issued a regular report of revenue of each product line, that wouldn't satisfy the standard either, because that also comes from them. What independant authority could provide specific sales data for a company's product? Further, if I run a small business, does all of this mean I don't have a valid trademark? After all, who will vouch for my private small business sales of specific products. I understand these are the reasons stated... and that is why I would be concerned. I asked, how would a small business owner meet this standard of proof.. and in response, you just restated the unreasonable standard. So I'll ask again, what kind of evidence could be provided by a small business that would meet these standards? It appears that EUIPO has just set a standard that no small business could meet, and therefore has made it near impossible for small businesses to enforce their trademarks.
- pjtr 8y ago
  "OPPOSITION GUIDELINES Part 6 Proof of Use" http://euipo.europa.eu/en/mark/marque/pdf/part%206-EN.pdf http://euipo.europa.eu/en/mark/marque/pdf/part%206-EN.pdf Section II.5.2: "It is not necessary that the mark must be used everywhere in the Community. Genuineness of use may be found also when the mark has been used in only one part of the Community, such as in a single Member State or in a part thereof." Section II.9.1: "The use need not have been made throughout the period of five years, but rather within the five years." Section III.7.2: "The standard of proof The CTM Regulation requires proof of genuine use of the earlier mark. Therefore the evidence submitted by the opponent must consist of proof, i.e. substantial evidence that the mark has been put to genuine use. Making merely a prima facie case is not sufficient." There are many examples of sufficient and insufficient proof of use throughout the guidelines. One example: "759/1999 MERITENE / MERTINA (EN): the Opposition Division found that a catalogue presenting the goods, price lists for 2 years, labels and advertisements were insufficient evidence, since they did not contain any information on the extent of use. The Board of Appeal (R 743/1999-1) reversed this: the information contained in the catalogue (products offered on the market) and the price lists (sales conditions) gives a reliable indication of the extent of use of the mark." Another one: "694/2000 Buss / BOSS (DE): the opponent submitted an affidavit of the opponent’s manager and a series of undated labels and pages of catalogues. The Opposition Division regarded the proof of use as insufficient, in particular as regards the time and extent of use. The Board of Appeal confirmed this finding (R 643/2000-1)."

by 1wd 8y ago

coke12 8y ago

This isn't bullying a tiny competitor. McD's would have no problem with a company called "SuperBurger" instead of "SuperMacs". They want to protect their customers from potential confusion.

jdietrich 8y ago
Supermac's have been doing business in Ireland since 1978. They are a household name with over 100 restaurants. The chain is named after the founder, Pat McDonagh. The burden of proof lies with McDonalds to prove that there is a significant risk of confusion; Neither I nor the EUIPO are persuaded of that.
- Proven 8y ago
  What's wrong with BigMc's?

onetimemanytime 8y ago

curious, on Appeal, are you allowed to submit new evidence? Or will McD claim that the court failed to look at it. On one hand, if you sold tens of (edited: Millions) of Big Macs a year something is there, use in commerce.

repolfx 8y ago

How was this lazy or the EU's ruling in any way sane or sensible at all? Do the people who work at EUIPO ever walk down a city street? Do they live in the real world at all? Why did they even ask McDonald to submit ANY proof that they sell a product called a Big Mac when there has been saturation level coverage of the entire fast food market with this product brand for ... well, I'm pretty sure I don't remember a time when the Big Mac did not exist. So at least as long as I've been alive. This appears to be a classic case of Kafka-esque bureaucracy, almost certainly politically motivated. No reasonable person would demand proof that McDonalds has a product called a Big Mac because if they've somehow lived in a cave for decades they could just walk down the street and verify it with their own eyes. The fact the the EU not only demanded this, but then rejected actual sales figures, marketing brochures and more as evidence, strongly suggests they wanted to whack McDonalds and nothing they could have submitted would have worked.

hyperman1 8y ago
There is some truth in this, but what happens next? Some other lawsuit for a smaller mark will rightfully complain how the burden of proof for bigcorps is now lower than for them. Where do you draw the line?
pgeorgi 8y ago
> Why did they even ask McDonald to submit ANY proof that they sell a product called a Big Mac when there has been saturation level coverage ... They asked because one of the classes the trademark was registered for (besides "animal based food product" and "sandwich" which are obvious) was "services to operate or franchise restaurants, or construction of restaurants, or consulting for constructing restaurants". This "services to operate or franchise restaurants" class was apparently used to keep SuperMac from expanding, and from the back and forth documented in the ruling, that was what they were really after. That class isn't sufficiently demonstrated by "we know they have a product by that name" since McDonald's has no "Big Mac stores". So the claim was that McD abused the trademark in a class they registered it for without using it in that class, and that use in another class isn't enough to hold it. Article 58(2) EUTMR states that a mark should only be revoked for the good or services for which it fell out of use, so they might have revoked it only for the "services for restaurants" class. As far as the sandwiches go, where "everybody knows McD sells Big Macs": They refer to the Centrotherm decision (http://curia.europa.eu/juris/document/document.jsf?text=&docid=109562&pageIndex=0&doclang=EN&mode=req&dir=&occ=first&part=1 http://curia.europa.eu/juris/document/document.jsf?text=&doc...) a couple of times, § 43 and § 46 in particular. These state that it's up to the trademark owner to prove use, and that probabilities or presumptions shall not be used (that might be unfair against the applicant). They applied that argument (which originally was made against a German company, so probably not "politically motivated" in the way you alluded to?) identically to McD's submission. The situation was nearly the same: as "proof" they offered material that merely showed that some sale probably has happened at some point in time. The Centrotherm decision said that this isn't sufficient, and the court took that as precedent. It's somewhat likely that the court asked them to provide better material a couple of times as that's what courts tend to do. With that ruling they handed it off to the appeals track. My guess would be less that it was "politically motivated" but that it was a response to something perceived as "contempt of court"-style behavior. It may be petty, but McD was engaging in such lawsuits sufficiently often as applicant against other parties' marks that they should know how to navigate the process.

rgbrenner 8y ago

Honestly, this makes me more concerned: 1) On UK, France Germany data: are you saying that EU trademarks must be used throughout europe in order to be valid? So supermac for example doesn't have a valid EU trademark because they operate only in ireland? 2) Self proclaimed numbers: I'm not aware of any reporting requirements for specific product lines. They're not reported for tax purposes.. just the overall company revenue/profits/etc. If McDonalds issued a regular report of revenue of each product line, that wouldn't satisfy the standard either, because that also comes from them. What independant authority could provide specific sales data for a company's product? Further, if I run a small business, does all of this mean I don't have a valid trademark? After all, who will vouch for my private small business sales of specific products. I understand these are the reasons stated... and that is why I would be concerned. I asked, how would a small business owner meet this standard of proof.. and in response, you just restated the unreasonable standard. So I'll ask again, what kind of evidence could be provided by a small business that would meet these standards? It appears that EUIPO has just set a standard that no small business could meet, and therefore has made it near impossible for small businesses to enforce their trademarks.

pjtr 8y ago
"OPPOSITION GUIDELINES Part 6 Proof of Use" http://euipo.europa.eu/en/mark/marque/pdf/part%206-EN.pdf http://euipo.europa.eu/en/mark/marque/pdf/part%206-EN.pdf Section II.5.2: "It is not necessary that the mark must be used everywhere in the Community. Genuineness of use may be found also when the mark has been used in only one part of the Community, such as in a single Member State or in a part thereof." Section II.9.1: "The use need not have been made throughout the period of five years, but rather within the five years." Section III.7.2: "The standard of proof The CTM Regulation requires proof of genuine use of the earlier mark. Therefore the evidence submitted by the opponent must consist of proof, i.e. substantial evidence that the mark has been put to genuine use. Making merely a prima facie case is not sufficient." There are many examples of sufficient and insufficient proof of use throughout the guidelines. One example: "759/1999 MERITENE / MERTINA (EN): the Opposition Division found that a catalogue presenting the goods, price lists for 2 years, labels and advertisements were insufficient evidence, since they did not contain any information on the extent of use. The Board of Appeal (R 743/1999-1) reversed this: the information contained in the catalogue (products offered on the market) and the price lists (sales conditions) gives a reliable indication of the extent of use of the mark." Another one: "694/2000 Buss / BOSS (DE): the opponent submitted an affidavit of the opponent’s manager and a series of undated labels and pages of catalogues. The Opposition Division regarded the proof of use as insufficient, in particular as regards the time and extent of use. The Board of Appeal confirmed this finding (R 643/2000-1)."