In January 2019, McDonald’s EU trademark registration “BIG MAC” was cancelled for non-use by the EU Intellectual Property Office (EUIPO).
Supermac, a growing fast-food chain in Ireland, sought to cancel “BIG MAC” on the basis that it had not been put to use by McDonald’s in the EU five years following its registration. The conflict between McDonald’s and Supermac is not new. Supermac has faced opposition for its burger, the Mighty Mac, a sandwich similar to the Big Mac.
In an attempt to defeat the action, McDonald’s filed evidence of use including documents such as: brochures and printouts of advertising posters of BIG MAC sandwiches in German, French and English, website printouts, affidavits and images of packaging.
However, the EUIPO held that brochures, posters and packaging didn’t provide information as to who the products were offered or whether they led to purchases. In addition, the affidavits needed to be supported by other types of evidence which were not provided.
Furthermore, the website printouts from McDonald’s websites were considered insufficient to prove use as there was no place, time or extent of use, or whether placing an order was possible on the website.
The EUIPO upon viewing the evidence provided, revoked the registration entirely. This has been a significant decision for Supermac’s owner McDough who is able to now expand in the United Kingdom.
In the aftermath of the cancellation of the BIG MAC trademark, Burger King in Sweden featured menus with names such as “The Big Mac-ish but Flame-Grilled Of Course”, “The Burger Big Mac Wished It Was” and “The Kind of Like a Big Mac, but Juicier and Tastier”.
In this underdog story, where “supermacs” truly beat the “big”, we can’t help but relish the taste of a hamburger.
For more information about the cancellation of trademarks, please contact us.
In the recent case of Hilton Worldwide Holdings LLP v Miller Thomson 2018 FC 895, the Federal Court of Canada affirmed that the provision of “hotel services” does not require a physical presence in Canada for the purposes of demonstrating “use” of a trademark.
In Hilton Worldwide, the mark of issue was WALDORF-ASTORIA. The Court overturned the Registrar’s decision to expunge the mark in association with “hotel services” where the owner did not have a “bricks-and-mortar” location in Canada.
Instead, the owner had an interactive website which offered worldwide registration, discounts to customers who pre-paid for rooms as well as loyalty programs. The Federal Court found that services such as registration and loyalty programs did constitute providing “hotel services” in Canada.
This case follows the recent Dollar General case maintaining its broad interpretation of “use” with services.
For more information on the Canadian trademark registration process please contact us.
Photo by Crew on Unsplash
Article by Nathalie Siah.
Amazon has launched a new initiative, Project Zero, attempting to limit brand counterfeiting on its platform. The name stems from Amazon’s goal to drive the sale of counterfeits clear to zero.
Currently, the anti-counterfeit measures in place rely on user feedback. Project Zero introduces several tools including automatic protections, self-service counterfeit removal, and product serialization which apply a unique code on every unit found in Amazon’s warehouse.
Automatic protection is powered by Amazon’s machine learning, and is able to scan online listings and remove potential counterfeits. Brand owners must provide key data points, such as a list of their trademarks, for scanning to be efficient.
The self-service tool, on the other hand, allows brand owners to remove infringing products without waiting for an Amazon review.
Finally, product serialization, gives brand owners a unique code for each unit in Amazon’s warehouses to ensure authenticity at a cost of between $0.01 to $0.05 per unit, based on volume.
Project Zero is currently an invite-only program. In order to enroll in Project Zero, a brand owner must have a registered trademark, enroll in Amazon’s Brand Registry and join the waitlist.
Canada is acceding to 3 international treaties in an effort to modernize our trademark regime.
The Madrid Protocol will help Canadian businesses file foreign trademark applications with a single application. See our blog on Madrid here.
The Singapore Treaty standardizes procedures for filing applications and makes those procedures more consistent internationally. It also recognizes non-traditional marks such as scents, holograms and colour.
The Nice Agreement standardizes the classification of goods and services across member countries.
The Trademarks Act and Regulations have also been amended and these changes will come into force on June 17, 2019. Among the key amendments are:
CIPO is also modernizing its online platform to improve e-filing. The plan is to have file histories online so that they can be searched electronically by 2022.
If you would like further information on the upcoming changes, please contact us.