This sort of result only harms the reputation of lawyers, in my opinion. It makes it sound like everything is about technicalities rather than the truth. This sort of thing is why lawyers get a bad reputation, that they lie for a living, and that the law is all about finding loopholes that allow you to get away with things, rather than about actual adjudication.
I agree with Chronos that making McDonald’s have to prove they sell Big Macs is a waste of the court’s time and resources. I hope an appeal can fix this, but I know that sometimes you can’t bring up new info on an appeal, so McDonald’s would lose their trademark on a technicality. And that’s bullshit, just like any “on a technicality” is bullshit. That’s like saying someone should go to jail because their defense was bad, rather than because they committed the crime.
But even if they can, it’s an appeal that didn’t need to happen.
The issue is not the plain “McDonald’s sells Big Macs” or “McDonald’s advertises Big Macs”. The issue is that, according to the established rules for a EU trademark, McDonald’s must offer Big Macs for sale throughout all of the EU and they did not show that. Perhaps it’s because McDonald’s lawyers punted on the case. Perhaps they didn’t because McDonald’s did not, in fact, sell Big Macs in the entirety of the EU for the necessary period of time.
The last couple posts have me confused. McDonald’s can’t trademark the Big Mac unless it has actually sold Big Macs everywhere in the EU, continuously, for a period of five years?
Wouldn’t that mean that trademarks are almost non-existent in the EU? You can’t get a trademark until you make actual sales of the product across the entire EU, continuously, for years? How could the Irish company from the article possibly demonstrate that for their trademark application so they can “move to the continent?”
Help me out, because that makes no sense at all. It would be like not being able to get a trademark in the US until you’ve demonstrated that you have made actual sales of your product in all 50 states continuously for five years. Surely most trademarks are acquired LONG before that threshold could be met, aren’t they?
You have a non standard definition of “bully”. Burger King is not bullying when they target advertising against the biggest restaurant chain on the planet. Neither is a little Irish chain looking to expand off the island bullying McDonald’s when McDonald’s takes them to court to shut them down. I have no idea how you can characterize it in such a way.
I don’t know if you read the article but part of the issue was that McDonald’s is sitting on a whole bunch of trademarks that they don’t in fact use. They clearly should have prepared for court better.
No, they’re not actually bullying. They’re trying to build a public image of themselves as bullies, because they’ve judged that the public likes bullies. Which is not the same thing, but which is still reprehensible.
They didn’t produce any evidence that wasn’t from some source they controlled or could edit, like Wikipedia articles (yes, they tried to use Wikipedia as evidence in court). You with your cell phone *would *probably have actually qualified as better evidence.
I’m sure the court knows perfectly well that McDonald’s sells Big Macs, but “You totally failed to do what the law requires but we know better so we’ll let it slide” isn’t something that’ll fly in court. You play by the rules or you lose, and McDonald’s got lazy and didn’t put in the required effort.
This is actually a good lesson about trademarks. This isn’t just a European issue. Even in the United States, trademark rights originate from use in commerce.
When you apply to register a trademark in the U.S., you are certifying either that (1) you are using this claimed mark in commerce now and here’s the evidence, or (2) you have a bona fide intent to use the trademark, which you will prove before your registration becomes final.
Trademark rights do not originate with you filing a paper with the government to stake out a claim on something that currently exists in just your imagination.
And that’s the big reason why I suggest to people to avoid using “trademark” as a verb, because people don’t understand what they’re saying when they say it.
For example, if someone says “Did you trademark your brand name?” What is implied is both “did you register it” and “did you establish your claim on it.” But those things don’t happen together.
You have to establish your claim to a mark through use in commerce before you can get a registration covering the mark. And apparently in the E.U., you must show five years’ of use in commerce. There’s nothing odd about that.
Trademark law is about your use of a brand name, sign, logo, slogan, etc., in such a way that the public recognizes it as a trademark. Registration is optional and secondary. It’s not about thinking that you would like to prevent anyone else from using a mark and filing a paper to fence them out (except in the case of an intent to use application, which still must be backed up by actual use and doesn’t trump someone else’s prior actual use).
Trademark law, at least in the U.S., is not about a race to the filing office.
And even in the U.S., trademark rights are geographically limited. If you only do business in Tennessee, then your rights don’t extend beyond Tennessee.
I’m assuming that the issue here is that you can’t get an EU-wide trademark unless you are actually doing business in all EU countries.
The Irish company wasn’t going for an EU wide trademark (I don’t think) - they just wanted to sell their Supermac burger outside Ireland, and McDonald’s was claiming trademark violation.
Doubtful. In terms of trade laws like this, the EU essentially operates as a single country and so using the trademark extensively within the EU would be sufficient – not necessarily to cover all corners.
As others have pointed out, if it were the latter it would be completely impractical: few if any companies would be eligible for an EU trademark, and you’d have weird situations like what happens when a new country joins the EU: do thousands of companies suddenly need to arrange air drops of their product? What if I need to temporarily close my only Lithuanian franchise?
I’ll have to read the actual text of the ruling before I can understand completely what happened —for some reason I’m having trouble locating it.
But generally speaking, I don’t think that the rule is that one must prove use in commerce in every single member state to get an E.U. trademark. But one must prove use in enough places throughout the E.U. that it makes sense to grant rights throughout the union.
But from what I’ve read about the ruling, it seems that what the EUIPO really objected to was the quality of evidence submitted by McDonald’s. From the excerpts I’ve read, it’s McDonald’s lawyers’ fault for relying on employee statements and website printouts and packaging—without explicitly laying out how the relevant public sees these uses.
You are likely right - some sort of preponderance standard. But there are apparently still country level trademarks or allowances, since the McDonald’s wasn’t trying to shut down the little guy in Ireland (although that was usage presumably was from before McDonald’s showed up).
There was a local restaurant opened by a returning Korean war vet called Mac’s. His top burger was called The Big Mac years before McDonald’s used the name. (They were delicious!) Mac sued and got a settlement. His original restaurant was car service only. He used the money to expand and added a dining room. Shortly thereafter, he turned it over to his children to run and retired. They lasted about five years before going out of business.
That location is now home to another Nebraska institution, a Runza
Why does this trademark issue prompt you to ask this question? What would either a yes or a no suggest to you about the trademark status of the term “Big Mac”?
I found it curious, since they have their own language and all.