Cancellation of BIG MAC and TERMINATOR trademarks for non-use


Two EUIPO cancellation decisions remind us of the importance of the evidence of use to be provided to prove the serious use of a European Union trademark when it has been registered for more than five years.

The first decision concerns the trademark BIG MAC in cancellation proceedings (<link https: copla trademark data download clw ccl en external-link-new-window>decision n° 14788C of 11/01/2019).

McDonald's provided the following evidence to demonstrate the genuine use of its BIG MAC trademark: affidavits signed by the chain's representatives in Germany, France and the United Kingdom, including statements on turnover in relation to BIG MAC burgers, brochures and promotional posters in German, French and English, packaging, excerpts from its websites in 18 countries of the European Union as well as excerpts from the WIKIPEDIA page on the BIG MAC burger.

The Cancellation Division of EUIPO took the view that those elements were not sufficient to demonstrate genuine use of the mark in question during the period given for the following reasons.
Affidavits are acceptable proof but are not enough on their own to establish the turnover generated by the sale of BIG MAC burgers.Extracts from the websites, brochures and advertising posters can demonstrate the nature of the use: the mark is affixed to sandwiches, and can show that the products are offered for sale.
But EUIPO considered that the reality of saleswas not demonstrated.
This decision reminds us that it is important to provide all necessary proofs of use, even for a well-known trademark.

The second decision concerns the TERMINATOR trademark. It was filed in 2005 to designate various goods and services such as CDs, video games, books, film distribution... The marked products are derivative products referring to TERMINATOR films. A company brought an action for cancellation of this trademark for lack of use (<link https: copla trademark data download clw ccl en external-link-new-window terminator>decision n° 14586C of 12/02/2019).

To prove the use of its mark, the owner produced trademark license agreements relating to the sale in Europe of various goods marked TERMINATOR, attestations of its licensees, royalty reports and extracts from internet pages concerning advertising and the sale of products.

The Office considered that the sign TERMINATOR was not used as a trademark distinctly from the title of the film to which the products relate. The TERMINATOR trademark is therefore rather descriptive of the products marketed than an indicator of commercial origin.
Since the public is not in a position to associate the sign with a commercial origin distinct from the title of the film that is the subject-matter of the various products, the trademark is canceled for all products and services.

In both cases, the owners appealed.