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News blog1 February 2023European Innovation Council and SMEs Executive Agency3 min read

Big Mac decision – Charlie Chaplin’s Charlot


In 2017, the Irish fast-food chain Supermac’s, filed an application for a declaration of revocation of the registered word mark “Big Mac” for all the goods and services, based on the lack of genuine use for a continuous five-year period. 

In 2019 the Cancellation Division of the EUIPO upheld Supermac’s revocation request, alleging that the evidences submitted by McDonald’s, such as printouts of European websites, posters, packaging, and affidavits from company representatives attesting to “Big Mac” sales in Europe, were not sufficient to prove genuine use of the contested trade mark. 

McDonald’s lodged an appeal against this decision before the Boards of Appeal of the EUIPO (BoA). 

Last December, the BoA issued a decision overturning the decision of the Cancellation Division. 

As European trade mark law allows, in certain cases, for additional evidence to be submitted at the appeal stage, McDonald’s was able to submit further evidences, such as consumer surveys, advertising materials, Google Analytics data and a financial audit report, which could demonstrate the genuine use of the trade mark within the relevant period. Moreover, based on the assessment of the documents submitted, the BoA accepted some evidences that were disregarded in the first instance, for instance the affidavits from the company’s representatives. 

The decision can be appealed to the General Court, so we will keep you posted of any further developments. 



Charles Chaplin was a silent film star and one of his most iconic characters was Charlot. Following a recent attempt to register the depiction of Charlot as a European Union Trade Mark (EUTM), the EUIPO has recently issued a decision stating that it is not suitable for registration. 

The company Roy Export SAS sought to register as a EUTM, a figurative trade mark depicting Charlie Chaplin in his popular character of Charlot, for goods and services in classes 9 (scientific apparatus and instruments, photographic apparatus and instruments, cameras), 35 (advertising, business management, clerical services), 38 (telecommunication services), 41 (teaching, training, entertainment services), and 42 (computer software design). 

The EUIPO examiner raised an objection pursuant to article 7.1.b) and c) and article 7.2 of the European Union Trade Mark Regulation (EUTMR) - i.e., the absolute grounds for refusal against a trade mark that is devoid of distinctive character anddescriptive.

The EUIPO refused the registration of the trade mark based on the following grounds: 

-        The fame and repute of Charlot character among the general public and the professionals to which certain goods in class 9 and services in classes 35, 38 and 42 are addressed, would lead the latter to recognise Chaplin as the comic character Charlot. 

-        As a result of films such as “The Dictator” or “Modern Times”, in which Chaplin denounced totalitarianism and Nazi ideology or the alienation of man by the machine, the character of Charlot conveyed very positive modern, liberal and humanist values to the relevant public. The relevant public would associate the mark with those values and therefore, the mark would no longer be perceived as an indication of the commercial origin of the goods and services, but rather as an advertisement whose purpose is to encourage or provoke the purchase of the product or subscription to the service in question. 

The EUTM application was therefore dismissed, as the applicant did not submit any observation within the time limit. 

The applicant can now lodge an appeal against this decision before the boards of Appeal of the EUIPO. 


Publication date
1 February 2023
European Innovation Council and SMEs Executive Agency