EU General Court confirms partial revocation of McDonald’s BIG MAC trade mark - Spanish court annuls Bitcoin trade mark

EU General Court confirms partial revocation of McDonald’s BIG MAC trade mark

In a recent judgement of 5 June 2024 (T-758/23), the General Court of the European Union dealt with the long-running trade mark dispute involving the well-known McDonald's brand and its trade mark BIG MAC against the Irish fast-food chain Supermac’s.

In 1996, McDonald's registered the EU trade mark BIG MAC (No 62638) for a wide range of goods and services related to the fast-food industry, including meals and sandwiches prepared from meat, chicken and fish, and restaurant services such as the provision of food and drink prepared for consumption and drive-through facilities. (Classes 29, 30 and 42 of the Nice Classification).

In April 2017, Supermac's filed an application for revocation of the trade mark with the EUIPO on the grounds that McDonald's had not made genuine use of the mark in connection with goods such as "chicken sandwiches" and services related to the operation of restaurants and the provision of food and drink.

At first instance, the Cancellation Division of the European Union Intellectual Property Office (EUIPO) revoked the contested mark on the basis that there McDonald’s had failed to provide sufficient proof of genuine use of the BIG MAC mark for all goods and services. On appeal, the Fourth Board of Appeal of the EUIPO partially annulled the decision of the Cancellation Division in respect of meals and sandwiches prepared from meat and chicken and services for the preparation of meals to take away (Classes 29, 30 and 42 of the Nice Classification). However, it upheld the revocation in respect of goods such as fish sandwiches, cookies and coffee, and services such as advice on the construction of restaurants for third parties. Supermac’s decided to appeal to the General Court claiming the BIG MAC trade mark should be revoked in its entirety, with the exception of its use for “meat sandwiches”. 

Article 18 of Regulation (EU) 2017/1001 requires that, in order to maintain its registration, a trade mark must be used in the EU in relation to the goods and services it is registered for. Such use must be proven through sufficient evidence if called into question. 

The General Court of the European Union had to decide whether sufficient and genuine use of the BIG MAC mark was proven to maintain its registration and, if so, for which goods and services.

Although the Court recognised the reputation of the MCDONALD'S mark in the fast food sector, it pointed out that the evidence did not conclusively prove the specific use of the BIG MAC mark for "chicken sandwiches" and restaurant services, in particular as regards the volume of sales, the duration of the use of the mark and its frequency. The evidence submitted by McDonald's, such as screenshots from McDonald's France's Facebook account, particularly in relation to the 'Grand Big Mac Chicken' offer in 2016, and a Google Analytics report on traffic to McDonald's websites, showed use of the BIG MAC mark for 'steak sandwiches', but very limited use for 'chicken sandwiches' and other services.  As a result, the General Court partially annulled and altered the decision of the Fourth Board of Appeal in respect of the goods 'chicken sandwiches' in Classes 29 and 30, 'food prepared from poultry products' in Class 29 and 'services provided in connection with the operation of restaurants and other establishments or facilities providing food and drink prepared for consumption and for self-service; preparation of food to take away' in Class 42, in respect of which the McDonald’s BIG MAC mark was therefore revoked.

Spanish court upholds Bitcoin trade mark in public domain

On 20 May, the Commercial Court No. 2 of Bilbao, Spain, annulled the Spanish trade mark "bitcoin", which reproduces the logo commonly used to identify bitcoin. 

In 2019, Eduardo Pérez, an entrepreneur specialised in buying and selling cryptocurrencies, registered the figurative mark No. 4046141, "bitcoin" consisting of the “bitcoin” word alongside the well-known Bitcoin logo, with the Spanish Patent and Trademark Office (OEPM) for Class 35 of the Nice Classification, which includes services such as advertising, commercial management and commercial administration.

The dispute began when Mr Pérez sued the Spanish company BITCOINFORME S.L for launching an advertising campaign in Madrid and Barcelona using a sign similar to the one he had registered. The company placed its bit2Me figurative mark (consisting of the words “bit” and “me” before and after the number 2 placed within a circle) on products, packaging, business documents, advertising and communication networks. 

In its defence, the Spanish company filed a counterclaim to annul the Spanish figurative mark "bitcoin" claiming that Mr Pérez’s trade mark consisted of elements which were either originally created and published under a Creative Commons licence in November 2010 by Satoshi Nakamoto published the Bitcoin white paper or had been made and published by others on the forum bitcointalk.org. 

The Spanish court upheld bit2me's counterclaim and annulled the "bitcoin" mark on the grounds that it had been registered in bad faith and infringed the intellectual property rights associated with the creation and licensing of the bitcoin logo. In its decision, the court noted that the creator of the logo had licensed it to the community for free and unrestricted use, which prevented a member from taking ownership of the logo for commercial purposes. In addition, the court pointed out that the Creative Commons licence attached to the first publication of the logo made it a copyright work, so that the free use of the logo did not allow for its appropriation or restriction, such as trade mark registration, as "public domain" is opposed to "private property".