This article has been written by B Andrews pursuing the Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho. This article has been edited by Zigishu Singh (Associate, Lawsikho) and Smriti Katiyar (Associate, Lawsikho). 

Introduction

A trademark is generally a word, phrase, design, symbol or the combination of all the above,   which identifies and also distinguishes the goods or services of one company from another. There are five main categories of trademarks. These are Generic Mark, Descriptive Mark, Suggestive Mark, Fanciful Mark, and Arbitrary Mark. You can protect your trademark by registering with the concerned authorities. In some countries it is not compulsory to register the Trademark. When registering a trademark it has to be clearly defined so that your competitor cannot encroach upon your products or services. In the European Union, before applying for registration one must  search whether one has registered the same mark earlier. Once this is confirmed the application can be submitted with relevant details regarding ownership, place of activity and the products or services to be provided along with the applicable fees. Once the application is submitted the European Union Intellectual Property Office (EUIPO) will examine the application and then publish this application for any opposition and for which a waiting time is given. Once the waiting is over and there is no opposition then they publish the Registration.

Genuine use of trademark

As per the EUIPO laws one of the conditions  to maintain the validity of a Trademark is to genuinely use the same. Otherwise third parties can encroach and use it. Lack of genuine use of trademark may lead to revocation of the Trademark. After Registration and completion of five years, the trademark owners have to demonstrate that they genuinely used the trademark for the product or service. 

What is genuine use? 

The owner of the trademark has to demonstrate the usage of the trademark continuously for the products or services for which they registered. If there is any opposition  then it is the duty of the owner to prove the usage or provide  proper reasons for nonusage, if not done the validity will be revoked. Genuine use means public issues of the trademark which the public can identify the products or services. It is determined by the market share of the product and the frequency of the usage. It depends not only on quantity but the volume of business, share in the relevant sector, marketing capacity and characteristics of goods and services in the relevant sector.  Accounting documents, sales figures, and invoices are not mandatory for establishing genuine use. Advertising efforts and the preparatory works are enough to prove the genuine use. Evidence needs to be provided for at least minimal use to prove genuine use.

Nature of goods and services

It is a rule of trademark law that a trademark has been registered for goods or services for which it is not possible to make clear subdivisions within the relevant class, the proof of genuine use of the trademark for those goods or services for the purposes of the opposition proceedings necessarily covers the whole class. The intention or the purpose of the goods and services plays a very important role in determining whether the particular goods and services can be viewed independently.

In the case of  Polfarmex SA v EUIPO , the applicant raised the question of whether registering a trademark under the name of as SYRENA trademark for racing cars is enough for the category of racing cars, as the usage is different in this context as compared to   cars used for transporting passengers. The court concluded that the racing car is an independent subcategory within class 12 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, and not enough to show in the whole category of the cars.

Nature of usage : altered form

Trademarks can also be used under EU trademark law in an altered form without altering the distinctive character of the mark. This is to meet the public demands and for promoting the brands according to the changed market conditions and the competition. In the case of  Euroapotheca UAB v EUIPO, the EU trademark GNC LIVE WELL in a changed font with different colours and with “gnc” “live well” was sufficient to prove the genuine use of the trademark as per the court. The court said by altering the background and the font, colour etc without altering the semantic content of the trademark is permitted and does not amount to anything which alters the trademark’s distinctive character. A Trademark as per its essential function should distinguish the product or services by fulfilling the essential function to prove the genuine use. The trademark can also be indicative of the origin of the product.

The valid evidence for the proof of genuine use

To prove the genuine use of the trademark valid evidence needs to be given, not probabilities or suppositions, which is only possible by giving solid evidence of usage of the trademark in the market and among the public. Sometimes grouping of items of evidence may be useful in proving genuine use, when individually it is not possible to prove. As per previous case laws websites place an important role to the genuine use of trademark. The brochures, advertising materials, the goods offered for sale, pages of social media, bank statements, and the online booking orders may prove to be good evidence. But it is worthless unless it indicates the time period, and the visits made by the public and the customers for the relevant goods and services and the territory of use. The affidavits submitted by the applicant or the party’s close to the applicant is invalid in proving the genuine use. The genuine use must be proved by the trademark holder as per the procedure established by the law. Also apart from the five year period the later period usage can also be presented to the court for evaluation, since it may be helpful in establishing the commercial usage of the trademark. This may be useful in establishing the intentions of the holder in the latter period, and to assess by the court for genuine use.

The case of Supermac’s vs McDonald’s

“Supermac’s” is an Irish  fast food restaurant Company with more than a hundred outlets that wants to expand its business in the UK and Europe. It is already registered in Irish Jurisdiction. It applied for Trade Mark protection for its European Business expansion. At that time McDonald’s opposed the granting of a trademark to “Supermac’s” for the European region. The reason given by  McDonald’s is that the Trademark named “Supermac” is confusingly similar to McDonald’s “Big Mac”. Supermac’s contended  this. The applicant filed a revocation request in European Union trade mark registration No. 62 638 ‘BIG MAC’ (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM(European Union Trade Mark), namely:

Class 29: Foods prepared from meat, pork, fish and poultry products, meat sandwiches, fish sandwiches, pork sandwiches, chicken sandwiches, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles, desserts.

Class 30: Edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar.

Class 42: Services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive- through facilities; preparation of carry-out foods; the designing of such restaurants, establishments and facilities for others; construction planning and construction consulting for restaurants for others.

The applicant asked for invoking Article 58(1)(a) of EUTMR(European Union Trade Mark Regulation).

Issues of the case

McDonald’s registered the trademark for its goods and services. These are valuable if it is used for its products continuously for five years. If it fails to use it without genuine reason the Trade Mark can be cancelled. This is called revocation. There are four reasons why a trademark can be cancelled or revoked.

1. If a Trademark is not used for the first five years from the calendar year of the Registration without genuine reason.

2. If there is no genuine use for five years without proper reason for no use.

3. If the owner does not use the trademark or there is inactivity in the utilization of this  Trademark then the name becomes a common name for the product or service and  the registered Trademark may be cancelled.

4. The Quality, nature and the geographical origin of the goods and services should not mislead the public by the way of using the trademark by the owner of the mark. Here it is the duty of the owner of the Trade Mark to prove its genuine use. 

Mc Donald’s objection to Supermac’s

Supermac’s after a long time wanted to expand the business for their products out of Ireland particularly in the European region and in the UK. Therefore they submitted an application to the EUIPO in class 42 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks,. McDonald’s also registered in class 42 for its Trademark of “Big Mac”. s. McDonald’s opposed Supermac’s registration saying that it is an infringement of their trade Mark and had given the following reasons.

The Infringer used the Trade Mark identical to the Mark and also used it for the same goods or services. The public is likely to be confused between trademarks and think the goods or services are associated with the same trademark.

The reputation of the Trade Mark in the Market is used by another competitor among the public to boost the business by misrepresenting the Trade Mark.

Here the ‘Supermac’s’ is not identical to ‘Big Mac’ but is used for identical services. Therefore McDonald’s had to prove the association between the Two trademarks to prove their infringement claim.

Supermac’s defence for the objection

“Super Mac” was founded by Galway Businessman Pat McDonough in 1978 and is the largest Irish owned fast food restaurant firm in the Republic of Ireland.

McDonald’s is a Super brand and has a valuable  reputation in the market.. The court can infer confusion from the surroundings due to the popularity of both brands. But Supermac’s challenge is based on the non use of trade mark for the product they claim as per law. This argument gave the verdicts to permit Supermac’s to use the Trademark.  Whereas McDonald’s tried to argue that because they had some products that started with “Mc” was so synonymous with them that they had the right to own the trademark “Mc”

The decision does not impact McDonald’s ability to use its preferred mark Mc-trademark or the other Trademarks throughout Europe and the other parts of the world. The EUIPO  upheld the US firm’s right to own the “Mc” trademark on chicken nuggets and a range of its sandwich products including meat, pork and chicken sandwiches.

McDonald’s had argued that due to its long and continuous use of the “Mc” term, the trademark had become widely and exclusively associated with McDonald’s by EU consumers.

The US firm also pointed to several earlier decisions in its favour issued by courts and trademark offices throughout Europe. But Supermac’s argued that “Mc” was a very common prefix for surnames in the UK and Ireland and throughout the European Union. It pointed out that there were a huge number of pubs, hotels, restaurants and food products which contain the prefix “Mc’ as part of the surname.

The Irish firm claimed that Mc Donald’s had never used the prefix “Mc” in a standalone sense, but only in combination with other words to brand their products. It is not the ‘Mc” Chicken sandwich, it is a “Mcchicken” sandwich as per the statement. The EUIPO agreed with Supermac’s that there was no evidence of use of the contested trademark “Mc” alone but only accompanied by the further elements.

Decision

1. The application for revocation is upheld.

2. The EUTM proprietor’s rights in respect of European Union trade mark No. 62638 are revoked in their entirety as from 11/04/2017.

3. The EUTM proprietor bears the costs, fixed at EUR 1080.

Conclusion

Main elements for genuine use: The trademark holders should prove the genuine use of trade mark registrations currently and continuously after registration for the last five years as per the regulations. The trademark holders should exercise extreme diligence in safeguarding the documents and materials for the use of trademark for support in future if any such materials are required in future. By maintaining time, place, nature of use, sales, online orders, delivery, finance details, customer details they can withstand legal challenges and can  demonstrate the genuine use of the trademark. It follows from the above that the EUTM proprietor has not proven genuine use of the contested EUTM for any of the goods and services for which it is registered. As a result, the application for revocation is wholly successful and the contested EUTM must be revoked in its entirety. According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 11/04/2017. An earlier date, on which one of the grounds for revocation occurred, may be fixed at the request of one of the parties. In the present case, the applicant has requested an earlier date. However, in exercising its discretion in this regard, the Cancellation Division considers that it is not expedient in this case to grant this request, since the applicant has not shown any legal interest to justify it.

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