McDonald's is likely to appeal the decision; however, whether it will succeed is another matter. Upon appeal it will need to show that there has been a clear error by the EUIPO in reaching the decision and based on the reasons given in the decision, that is unlikely to be straightforward.

This is not an insignificant loss for McDonald's, which has, as part of its marketing strategy, attempted to monopolise the use of the "Mc" prefix, which has juxtaposed with additional elements for some time. The "Mc" registration has provided McDonald's with a broad right for use both defensively and offensively, to enforce against third parties that us the "Mc" term. This decision does not alter McDonald's ability to continue to use the "Mc" prefix (indeed it has registrations for various other "Mc" prefixed marks such as "McChicken", "McNuggets" and "McFlurry"; however, it does affect the scope of registered rights McDonald's has in the "Mc" prefix to enforce against other third parties, which becomes more limited.

During the course of the proceedings, McDonald's sought to rely on an earlier MACCOFFEE case which went in their favour; however, the EUIPO said the case was irrelevant to these proceedings as what was confirmed in the MACCOFFEE case was the existence of a family of marks, all characterised by the same prefix "Mc", taken from the "McDonald’s" trade mark.

The EUIPO agreed with Supermac’s argument that there was no evidence of use of the "Mc" mark alone, but only accompanied by further elements. Therefore, the question was whether the addition of these other verbal elements altered the distinctiveness of the contested EUTM or not. The EUIPO concluded that the use of signs such as "McDonald’s" could not be considered an acceptable variation of the "Mc" mark, pointing out that the two were not broadly equivalent and the differences between them were not merely negligible.

Takeaway points

1. Brand owners with registrations for prefix trade marks should carefully consider whether the use of other marks containing the common prefix could also be considered to be genuine use of the prefix itself. If the distinctiveness of the mark is altered in a way that can likely be perceived by the average consumer, and if the prefix is not used alone, then other brand owners could potentially suffer a similar fate to McDonald's.
2. Trade marks that are not used in the EU can become vulnerable to challenge. This case, much like the BIG MAC case, highlights the need for even the largest of companies to jump through the necessary hoops and diligently file sufficient good quality evidence of genuine use in cancellation actions that can support the validity of a registration.
3. The big brands are not somehow immune to such challenges. The methods and means of proving genuine use of a mark are extensive. Genuine evidence of use has not been proven in this case not because of an excessively high standard of proof (indeed there is no need for the use to be quantitatively significant for it to be considered genuine), but because the evidence filed was simply not strong enough to maintain the registration for the majority of the goods and services.