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In a case involving the dispute between the trademarks “Big Mac” and “Supermac's” in the European Union, the Irish company Supermac's (Holdings) Ltd. applied in 2017 for the abandonment of registration #626381, for the trademark “Big Mac”, owned by McDonald's International Property Co. Ltd, on the grounds of non-use.
The aforementioned registration was granted to identify, among other products, meat and chicken-based foods and sandwiches, as well as food and beverage supply services.2 After analyzing the evidence of use presented, the Cancellation Division of the European Union Intellectual Property Office (EUIPO) determined the cancellation of the registration for all products and services, concluding that the documents were not capable of proving the genuine use of the trademark.3
McDonald's appealed the cancellation decision, and the EUIPO Board of Appeal partially upheld the appeal, maintaining the registration for the above-mentioned products and services in its entirety, which displeased Supermac's. The company then sought to have the decision overturned before the General Court of the European Union.4
Thus, on June 5, 2024, the General Court decided for the partial cancellation of the registration of the “Big Mac” trademark, in relation to chicken-based foods, chicken sandwiches and food and beverage supply services5, 6 and 7, i.e., now the trademark only protects “meat-based prepared foods and meat sandwiches.”8
Although this case may still be subject to re-examination by the Court of Justice of the European Union,9 it serves as an example to highlight the need for trademark registration owners to be vigilant regarding the genuine use of their trademarks to avoid the cancellation of their registrations through abandonment. The fact that trademarks may have a certain reputation or be notoriously known, as is the case with the BIG MAC trademark, does not exempt their owners from proving use in the territory in which they obtained the registration.10
In Brazil, the abandonment of trademark registrations is provided for in Law #9,279/1996 (Brazilian IP Statute), between Articles 143 and 146.11 The Brazilian Patent and Trademark Office (BRPTO), the agency responsible for examining and registering trademarks in the administrative scope, outlines in its Manual of Trademark Analysis Procedures and Guidelines all the steps and criteria for evaluating an request for non-use cancellation, including what is considered valid for proving genuine use of a trademark.12
To this end, the registration owner must present evidence demonstrating the use of the trademark in the last five years “counting, previously, from the date of the request for abandonment”.13 It is necessary to note following:
Therefore, owners must always be vigilant to avoid the cancellation of their registrations due to non-use, and it is worth noting that proof of use of the trademark to identify only certain products or services protected by the registration does not guarantee the rejection of the request for abandonment. In this sense, as occurred in the case involving the “Big Mac” trademark in the European Union, the Brazilian IP Statute also allows, in its Article 144, the partial cancellation of the registration “in relation to [products or services] that are not similar or related to those for which the trademark was demonstrably used”.
Thus, it is ideal to use the trademark as a preventative measure, bearing in mind the criteria for examining the cancellation requests in the territory in which the trademark is registered, with the aim of avoiding the loss of registration, even if partial, and the potential losses arising therefrom.
