Trade Marks: Even the Big can Fall

By Louise Wolf, Senior Associate

In a David versus Goliath type battle, McDonalds lost its rights to the registered trade mark for Big Mac.  After being registered since 1996, the registration for Big Mac was revoked in January 2019 by the European Union Trade Mark Office.  What went so wrong?  What does this mean for trade marks in Australia?

Supermac’s vs McDonalds

Supermac’s is a chain of over 100 burger restaurants located in Ireland.  Supermac’s took its name from the nickname of its founder, Pat Donough, from when he played high school Gaelic football.  Pat Donough claims he had suffered from ‘trademark bullying’ by McDonalds as they blocked him from expanding into other areas of Europe on the basis that Supermac’s would create confusion in the marketplace with McDonalds.

In 2017, Supermac’s applied for cancellation of the Big Mac trade mark for non-use in the EU.  In January 2019, the EU Intellectual Property Office (EUIPO) made the decision to revoke the Big Mac trade mark in the EU on the basis that McDonalds failed to prove genuine use in the EU in the five years before the application was made.  Reasons why the evidence was insufficient included: it only related to usage in the United Kingdom, France and Germany; there were three affidavits provided which were given by employees of McDonalds and not third parties; and references to Wikipedia and screen shots of the McDonalds website and various items of promotional material did not provide sufficient support to the affidavits. 

McDonalds is in the process of appealing the decision and made a statement that they are confident that the decision will be overturned. 

Response by Burger King in Sweden

The decision has surprised many.  The response of Burger King in Sweden has been sending the internet into meltdown.  Within days of the decision, Swedish Burger King was advertising a new menu with products called:  Like a Big Mac But Actually Big; The Burger Big Mac Wished It Was; Anything But a Big Mac; Kind of Like a Big Mac But Juicier and Tastier; Big Mac-ish But Flame-Grilled Of Course.  This YouTube clip shows customers ordering from the new menu.

Menu used by Burger King (Source: YouTube/screenshot)

Big Mac in Australia

So what of the iconic Big Mac in Australia?  

There are eight Big Mac word marks registered as trade marks in different classes in Australia.  A summary of the classes includes: 29 (meat including hamburger patties); 30 (hamburger, coffee, tea, bread, biscuits, cereals); 28 (games, toys, playthings); 32 (beer, non-alcoholic beverages), 21 (food utensils, containers, cups); 42 (restaurant services, take away food stores); 25 (work clothes); 16 (printed matter, instructional and teaching material, printed publications); 41 (education services; children’s entertainment, charitable and fund raising activities); 30 (chicken sandwiches).  One wonders whether the trade mark Big Mac is or has actually been used in relation to all of those classes and whether they could also be vulnerable to cancellation for non-use in Australia.

Hungry Jacks in Australia

A level of ‘healthy’ competition between rivals McDonalds and Hungry Jacks continues in Australia.

In November 2019, Hungry Jack’s Pty Ltd registered the word mark “Big Jack” as a trade mark in classes 29 and 30.   It has recently started being sold in Australia.  One YouTuber (Greg’s Kitchen) describes it as looking very similar, but with a sweeter sauce and flame grilled burger.

In March 2019, Hungry Jack’s Pty Ltd applied to register the logo shown below in classes 29, 30 and 43. IP Australia has not yet accepted the trade mark for registration.  It will be interesting to see if it will be accepted by IP Australia at some point, if so, whether McDonalds will oppose its registration.

Cancellation for non-use in Australia

In Australia, trade marks registered before 24 February 2019 that have been registered for five years, can be vulnerable to cancellation on the ground that they have not been used for the period of 3 years ending one month before the application was filed.   If a trade mark was registered on or after 24 February 2019, it only needs to be registered for three years before a non-use application can be brought. 

Takeaway for Trade Mark Owners

The takeaway point that all trade mark owners should take from these stories is that there is always a competitor around the corner who might try to benefit from the reputation you have built in your trade marks.  It is very important to ensure you continue to use your trade marks and keep evidence and data relating to the use of such trade marks.  For example, records and copies of invoices of sales, photos of products sold, store openings, data relating to views and comments on websites and social media sites and so on may all be useful.  In addition, where possible, evidence from third parties who have bought the product or service under that trade mark are also likely to be helpful. 

Anyone who has a query relating to their trade marks or those of a competitor should contact Louise Wolf via ip@mst.com.au.