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Date: June 5, 2019
Posted by: CPDMA Team

It is not enough just to register a trademark, it is necessary to use it

In January of this year, a fight between the North American giant McDonald's and the Irish restaurant chain Supermac's drew attention over the famous “BIG MAC” brand in Europe. It all started in 2015, with an attempt to expand the Irish network across the United Kingdom and the European Union. The chain, which owns more than 100 stores spread across its country of origin, filed a request for registration of the brand, which bears the name of the restaurant, “SUPERMAC'S”, before the European Union Intellectual Property Office (Euipo).

In an attempt to prevent the registration, McDonald's presented an objection, claiming that the brand could cause confusion in consumers because it is similar to the one owned and pre-existing, the “BIG MAC”. This strategy, however, was frustrated. The agency understood that “SUPERMAC'S” had the previous use of the name, given that it was the nickname of the company's founder, Pat McDonagh, still in his youth, therefore subject to registration.

In response to the attack, in 2017, the Irish company requested the cancellation of the “MC” and “BIG MAC” brands, alleging illegal marketing and trademark registrations solely for market reservation by the American company. The provision of copy of websites, packaging, statements by executives and a print of McDonald's page on Wikipedia — in order to prove its operations and sale of products in the European Union —, however, was not enough: Euipo understood that the related evidence was insufficient to prove the effective use of the “BIG MAC” trademark. The core of the discussion was in the realization of the proof that the Big Mac snack is sold throughout Europe, making use of the brand, not being a case of registration for blocking competition.

The market passed on statements about the definitive loss of the “BIG MAC” brand, however, the administrative phase of the process was not over. In March, McDonald's appealed the decision, which is still pending judgment. In fact, the judicial phase, very likely if there is no modification of the decision on appeal, as far as we have news, has not even started. McDonald's appeal will be heard by the high court of the European Union in Luxembourg.

The North American multinational owns a large portfolio, in addition to owning rights over its brands in all European countries. The registration under discussion concerns only one of the many registrations of the “BIG MAC” brand, this one, specifically, in capital letters. In other words, nothing is lost. The “big mac” trademark has been registered in the European Union since 1998, having been renewed twice without any complications. 

You may not like the snack or even the company, but the colossal company's worldwide brand protection strategy is extremely competent and professional. In this sense, in relation to Brazil, we did not identify many differences. Our trademark granting system is attributable by law; that is, the one who first enters the request for registration of the expression has priority over him.

However, it is extremely important to make it clear that the registration of the trademark obliges its owner to use it exactly in the segment for which it was granted, comprising all the products or services contained in the certificate. Acting differently leads to the hypothesis of loss of right, with the extinction of the registration for forfeiture. It is enough that, after five consecutive years of granting the registration, the brand is no longer used in the market or that the owner company changes its logo. In this scenario, the registering body will provide the registration for the “next in line” bearing a similar mark, provided that the latter can prove the effective use of the mark. 

The "Macs" fight makes it clear that people cannot use the trademark registration system as a way to reserve the market or illicitly enrich themselves at the expense of others, exploiting the sale of third parties' rights. Unregistered and unused trademark is a legal and, of course, marketing temerity.

Source: Vanessa Pereira Oliveira Soares via the Legal Consultant website.

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