3 ms·

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

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
  That's a good explanation for the restaurants class... but the decision clearly says "in it's entirety" and "against all goods and services". https://www.courthousenews.com/wp-content/uploads/2019/01/Big-Mac-euipo.pdf https://www.courthousenews.com/wp-content/uploads/2019/01/Bi...
  - pgeorgi 8y ago
    The standard McD's defense needed to meet was "establish[...] whether commercial exploitation of the mark is real". "However, the purpose of the provision requiring that the earlier mark must have been genuinely used ‘is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks’" So the use of the trademark needs to have had some meaningful effect for the commercial activities of the mark's holder, even if unsuccessful or in a niche market. They sent as materials: 1. A signed statement by UK/FR/DE managers how this mark is important and in use. 2. menu templates with no prices, and no information where and when these are used, and how their circulation looked like 3. packaging material with no information where and when these were used 4. marketing materials, incl copies of their websites, again with no prices, time frames, distribution data 5. sales numbers: "more than 75 Million per year" (not mentioned: where, and why) 6. a wikipedia article (might have been edited by McD or their counsel and reverted immediately by another editor) Based on that data, a reasonable scenario could be: 10 corporations across the UK/FR/DE region ordered a total of 350000 sandwiches per work day from McD for their workforce, served from their cafeterias. That's the >75M items sold. Since they didn't care what kind of sandwich, McD sent Big Macs. Impact of the trademark: 0. The packaging and marketing material might have been internal prototypes that were never used. Impact of the trademark: 0. From reading the decision, McD never bothered to make the case that any of that material they brought up as defense mattered in any way. The strongest one on its own was probably the "yes, Big Mac is important to us, pinky swear!" testimony by the managers, but the inherent conflict of interest reduced its impact quite a lot. The other ones? Yeah, sheets of paper or cardboard with "Big Mac" on it - so? If McD doesn't care enough to mount a useful defense, why should the EUIPO care? It doesn't have to protect trademark holders from their own active malcompliance. The USPTO handles trademark matters in a similar fashion, by the way: USPTO TBMP 803 states "Rather, one judge is assigned to read the testimony and examine the other evidence of record, discuss the case with the other judges, and then draft a decision and supporting opinion.", so they also decide only by the evidence that is on the record, with no requirement to take into account "common knowledge" or anything like that to help any side of the dispute (IME courts do give hints that you could ask for $keyword at $office or that $paperwork might help provide a clearer view onto the matter, but I don't know how EUIPO handles that). Of course, there's an appeals process, and McD will take it, and they'll exercise more care in making their case this time around, and the mark will likely be reinstated for sandwiches and potentially also for animal based food. The EUIPO treats McD the same as they treated Centrotherm, even though they're very different companies in every way. Just like they're supposed to. They might consider such consistency more important than the question if a sandwich's name has legal protection or only de-facto protection (by everybody actually knowing about it belonging to McD, plus its non-EU trademarks) for a short period of time in 2019 until appeals are done.
oliwarner 8y ago
> Kafka-esque bureaucracy Is it? They seem to be holding McDonalds to the same evidenciary standards as anybody else. That's the opposite of Kafkaesque bureaucracies, who make shit up as they like. They were just being consistent.
- repolfx 8y ago
  Hardly - this case appears to revolve around the decision that Wikipedia isn't an "independent source". That can be argued both ways. Wikipedia isn't owned by McDonalds. They probably didn't write the pages on it. I'm sure the lawyers thought that whoever they were dealing with was just a fussy box ticker and this would be sufficient to tick the box. Now the correct decision is clearly that McDonalds do sell a product called the Big Mac. That is a matter of fact. If EUIPO managed to conclude that this is in doubt, it's their system for determining facts that is wrong, not reality. Whoever made this call at EUIPO could easily have accepted the submitted documents as evidence that McDonalds make a product called the Big Mac. They could have worked to ensure this outcome didn't happen. That they didn't do so indicates at best severe dysfunction, at worst some ulterior motive.
  - oliwarner 8y ago
    The rules are rather simple and constant. The burden of proof is on the EUTM holder. Easy. McDonalds knew this, they knew what was expected, and they messed it up.
    - repolfx 8y ago
      The rules are clearly not simple. If they were, McDonalds' team of lawyers wouldn't have been tripped up by them, and in particular if the rules were simple and constant then it'd have been clear what sources would count as independent evidence. Regardless, expecting employees of companies to be perfect in every way and terminating something as valuable as the Big Mac trademark if they aren't is just bad government. People make mistakes, doubly so if the rules are badly written or being maliciously enforced. Overall what I see is a near constant stream of attacks on American businesses by the EU, usually via impossibly vague or absurdly written rules. The EU claims to be based on a system of laws but it sure doesn't look like it when you see how things play out in reality.

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
That's a good explanation for the restaurants class... but the decision clearly says "in it's entirety" and "against all goods and services". https://www.courthousenews.com/wp-content/uploads/2019/01/Big-Mac-euipo.pdf https://www.courthousenews.com/wp-content/uploads/2019/01/Bi...
- pgeorgi 8y ago
  The standard McD's defense needed to meet was "establish[...] whether commercial exploitation of the mark is real". "However, the purpose of the provision requiring that the earlier mark must have been genuinely used ‘is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks’" So the use of the trademark needs to have had some meaningful effect for the commercial activities of the mark's holder, even if unsuccessful or in a niche market. They sent as materials: 1. A signed statement by UK/FR/DE managers how this mark is important and in use. 2. menu templates with no prices, and no information where and when these are used, and how their circulation looked like 3. packaging material with no information where and when these were used 4. marketing materials, incl copies of their websites, again with no prices, time frames, distribution data 5. sales numbers: "more than 75 Million per year" (not mentioned: where, and why) 6. a wikipedia article (might have been edited by McD or their counsel and reverted immediately by another editor) Based on that data, a reasonable scenario could be: 10 corporations across the UK/FR/DE region ordered a total of 350000 sandwiches per work day from McD for their workforce, served from their cafeterias. That's the >75M items sold. Since they didn't care what kind of sandwich, McD sent Big Macs. Impact of the trademark: 0. The packaging and marketing material might have been internal prototypes that were never used. Impact of the trademark: 0. From reading the decision, McD never bothered to make the case that any of that material they brought up as defense mattered in any way. The strongest one on its own was probably the "yes, Big Mac is important to us, pinky swear!" testimony by the managers, but the inherent conflict of interest reduced its impact quite a lot. The other ones? Yeah, sheets of paper or cardboard with "Big Mac" on it - so? If McD doesn't care enough to mount a useful defense, why should the EUIPO care? It doesn't have to protect trademark holders from their own active malcompliance. The USPTO handles trademark matters in a similar fashion, by the way: USPTO TBMP 803 states "Rather, one judge is assigned to read the testimony and examine the other evidence of record, discuss the case with the other judges, and then draft a decision and supporting opinion.", so they also decide only by the evidence that is on the record, with no requirement to take into account "common knowledge" or anything like that to help any side of the dispute (IME courts do give hints that you could ask for $keyword at $office or that $paperwork might help provide a clearer view onto the matter, but I don't know how EUIPO handles that). Of course, there's an appeals process, and McD will take it, and they'll exercise more care in making their case this time around, and the mark will likely be reinstated for sandwiches and potentially also for animal based food. The EUIPO treats McD the same as they treated Centrotherm, even though they're very different companies in every way. Just like they're supposed to. They might consider such consistency more important than the question if a sandwich's name has legal protection or only de-facto protection (by everybody actually knowing about it belonging to McD, plus its non-EU trademarks) for a short period of time in 2019 until appeals are done.

oliwarner 8y ago

> Kafka-esque bureaucracy Is it? They seem to be holding McDonalds to the same evidenciary standards as anybody else. That's the opposite of Kafkaesque bureaucracies, who make shit up as they like. They were just being consistent.

repolfx 8y ago
Hardly - this case appears to revolve around the decision that Wikipedia isn't an "independent source". That can be argued both ways. Wikipedia isn't owned by McDonalds. They probably didn't write the pages on it. I'm sure the lawyers thought that whoever they were dealing with was just a fussy box ticker and this would be sufficient to tick the box. Now the correct decision is clearly that McDonalds do sell a product called the Big Mac. That is a matter of fact. If EUIPO managed to conclude that this is in doubt, it's their system for determining facts that is wrong, not reality. Whoever made this call at EUIPO could easily have accepted the submitted documents as evidence that McDonalds make a product called the Big Mac. They could have worked to ensure this outcome didn't happen. That they didn't do so indicates at best severe dysfunction, at worst some ulterior motive.
- oliwarner 8y ago
  The rules are rather simple and constant. The burden of proof is on the EUTM holder. Easy. McDonalds knew this, they knew what was expected, and they messed it up.
  - repolfx 8y ago
    The rules are clearly not simple. If they were, McDonalds' team of lawyers wouldn't have been tripped up by them, and in particular if the rules were simple and constant then it'd have been clear what sources would count as independent evidence. Regardless, expecting employees of companies to be perfect in every way and terminating something as valuable as the Big Mac trademark if they aren't is just bad government. People make mistakes, doubly so if the rules are badly written or being maliciously enforced. Overall what I see is a near constant stream of attacks on American businesses by the EU, usually via impossibly vague or absurdly written rules. The EU claims to be based on a system of laws but it sure doesn't look like it when you see how things play out in reality.