Category: Weblog

Last week, I saw an article of nu.nl in my LinkedIn feed with a title that caught my attention:“Anyone can sell a Big Mac (with chicken)“. When I then Googled I found several more newspaper articles with similar headlines and text. For example, NRC writes:“Anyone may now sell a ‘Big Mac’ if it is a sandwich with chicken“. And the AD writes: “Any burger baker may use the name Big Mac“. In case reading these headlines made you think “that sounds like a gap in the market!”, I advise you to read on quickly.

The newspapers seemingly draw this conclusion based on a recent European Court of Justice ruling. In it, the court ruled that the European Union Intellectual Property Office (EUIPO) was right to declare the trademark “Big Mac” lapsed for food prepared with poultry and sandwiches with chicken. However, how the various newspapers came to the conclusion on that basis that any burger baker can now sell his (chicken) burgers under the “Big Mac” brand is mystery to me. To prevent a lot of burger bakers from receiving a writ of summons from Ronald Macdonald in the near future, I think it would be good to dispel this myth of the quality newspapers in this blog.

The Big Mac trademark

On 1 April 1996, McDonalds filed the trademark “Big Mac” as a European Union wordmark. And whether you love or hate it, almost everyone will be familiar with the famous burger and its trademark. There is even an actual (somewhat playfully intended) economic index named after it – the Big Mac index – which was conceived by The Economist in 1986. After all, the Big Mac is sold almost everywhere in the world and contains roughly the same simple ingredients everywhere. A very strong trademark that many trademark owners can only dream of. Perhaps the trademark is almost as strong as the trademark owner’s own name registered as a trademark.

Goods and services

A trademark is always registered for specific goods and services. Thus, this also applies to the trademark “Big Mac”, which was registered in 1996 for, among other things, foods prepared with meat in general, but also for foods prepared with specific categories of meat, namely pork, fish and poultry. In addition, the trademark was specifically registered for sandwiches containing meat, fish, pork and chicken. Ironically, not specifically for sandwiches containing beef; while in practice the Big Mac is prepared with beef (India aside, but the burger has a different name there). The trademark was additionally registered for a wide range of other ingredients, including preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles, desserts, biscuits, biscuits, biscuits, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings and sugar.

Declaration of revocation

There is an obligation on trademark owners to put a registered trademark to genuine use in relation to the goods and services for which it is registered. If a trademark owner fails to do so for a continuous period of five years, it risks revocation its trademark under Article 58(1)(a) of the European Union Trade Mark Regulation. Where a trademark owner takes action against an alleged infringer, the alleged infringer has the option of filing a counterclaim for revocation.

And this is what happened in 2017. An Irish burger restaurant called Supermac’ s got caught up in proceedings in which McDonalds invoked its “Big Mac” trademark. Supermac’s responded by filing a claim for revocation of the Big Mac mark. This was because, according to Supermac’s, McDonalds was using its trademark exclusively for the famous beef sandwich – which was not included in the trademark registration. The EUIPO went along with that argument and declared the revocation of the “Big Mac” trademark.

Fourth Board of Appeal

McDonalds appealed, arguing first that beef and chicken fall under the broader categories of meat and poultry. Moreover, it would have actually sold burgers containing both beef and chicken in the past five years. It presented very substantial evidence for this. To substantiate the sale of chicken burgers, it recited that, among other things, it allegedly sold a Big Mac in France that was prepared with chicken meat, as allegedly shown in the Facebook screenshot below.

The Fourth Board of Appeal ruled on 14 December 2022 that chicken meat does indeed fall under the broad category of poultry. Moreover, the evidence submitted would show that the trademark was indeed normally used for sandwiches prepared with beef and chicken meat. The decision to declare the trademark’s complete revocation was therefore reversed.

Normal use for sandwiches containing pork and fish, as well as all the other ingredients mentioned earlier, was not accepted by the Board of Appeal. While it is true that some ingredients were used in the preparation of the Big Mac, the Board of Appeal did not find it plausible that the public actually associates the trademark “Big Mac” with these ingredients. After all, no one talks about Big Mac vegetables, Big Mac cheese, or Big Mac pickles.

Court of Justice

The case eventually ended up in the Court of Justice. There, Supermac’s argued that the evidence previously submitted by McDonalds as far as the Big Mac with chicken was inaccurate. First of all, the advertising material supplied would only consist of drafts – as evidenced by the text “confidential” included therein. Drafts of advertising material obviously do not conclusively prove that a trademark is genuinely used in practice. Moreover, the screenshots provided by Facebook (including as shown above) would date from 2016; and thus fall outside the required five-year period. This, according to Supermac’s, did not prove that McDonalds had used its trademark for poultry and chicken sandwiches in the past five years. The ECJ agreed and rejected these goods.

Consistency

The consequence of the revocation is that the trademark Big Mac is no longer registered for food prepared with poultry and sandwiches with chicken. And that’s all there is to say about it. The fact that the trademark is no longer registered for food prepared specifically with poultry and specifically for chicken sandwiches does not mean that the trademark can therefore be freely used by anyone wishing to sell chicken burgers under the “Big Mac” trademark.

First of all, beacause the trademark is still registered for foods prepared with meat in general. When a court considers whether there is a likelihood of confusion, it will still take into account that meat and chicken are complementary to each other. The greater simply includes the lesser. The trademark registration may have become less specific, but that does not mean that the trademark has thereby lost its protection entirely in respect of the more specific goods that have been crossed out.

Trademark with a reputation

Moreover, McDonalds has another important legal ground to act against parties using the “Big Mac” trademark (or trademarks that are similar). The trademark is considered to be a trademark with a reputation. And such trademarks enjoy a very broad protection under Article 9(2)(c) of the European Union Trade Mark Regulation. In fact it does not even matterr for which goods or services an identical or similar trademark is used. As long as this causes confusion and where the use without due cause of the trademark would take unfair advantage, or be detrimental to, the distinctive character or the repute of the trademark. There is no doubt that this would be the case if anyone other than McDonalds were to use the “Big Mac” trademark for other goods or services. Be it chicken burgers or flip-flops. The Dutch newspapers quoted earlier have drawn a conclusion that (at least in terms of trademark law) is not based on anything.

Conclusion

Were you planning to start selling Big Macs prepared with chicken tomorrow? If so, you would be wise to reconsider your business plan. There could be an angry clown at your doorstep in no time… Of course, you can then still try to recover your losses from one of the quoted Dutch newspapers.

Section 16b and 16c of the Dutch Copyright Act (Auteurswet) provide that one may make a few copies of copyrighted works for one’s own practice, study or use, as long as such use does not have a commercial purpose. A copy for one’s own use is called a “home copy” (thuiskopie). If all conditions are met then no permission from the copyright holder is needed for that copy. If that copy is made on a physical medium, such as an external hard disk, phone or tablet, then a small fee is owed to the copyright holder, the so-called private copy levy. That fee is factored into the purchase price of these physical mediums. So without realising it, you have probably already paid a private copy levy many times.

Offline streaming

Several streaming services now offer the option of “offline” streaming. This means that music, a film or series is temporarily downloaded onto a device so that it can be listened to or watched offline at another time. Usually, streaming services impose restrictions on this. For example, a film or series is often available offline for up to 30 days after downloading it. Of course, when cancelling a subscription, the ability to listen to or watch previously downloaded music or films also logically expires.

HP v Stichting Onderhandelingen Thuiskopievergoeding

HP took the position in 2019 in proceedings against the Stichting Onderhandelingen Thuiskopievergoeding because of the aforementioned restrictions that offline copies of music and films, as provided by streaming services, do not qualify as home copies. In HP’s view, streaming services control those home copies and not the end users. Of course, HP’s position is not surprising for a laptop manufacturer. To determine the amount of the home copy levy of data carriers is how often home copies are made on a given physical carrier.

The court of The Hague ruled in 2019 that offline streaming copies (also known as “tethered downloads“) fall to be classified as home copies within the meaning of the Copyright Act. Indeed, according to the court, they were in fact reproductions made for private use. The fact that people already pay a licence fee through streaming services as well did not, according to the court, detract from the Dutch system of home copying fees. The court also found it unnecessary to ask preliminary questions about this to the ECJ.

Court of Appeal of The Hague

In 2022, the case was again submitted to the Hague Court of Appeal. HP took the position that a tethered download is not a home copy because it is not made by a natural person and for his own use. Technically, this is indeed the case. After all, the copy is not made by the user but by the streaming service. The user only has to press the “download” button, effectively giving an instruction to the streaming service. However, Section 16b of the Copyright Act – which deals with copies of music and digital copies – does not require someone to make a copy himself. One may also instruct someone else to do so.

However, the court of appeal noted that it can be deduced from the parliamentary history that a copy does lose its status of a private copy when the other party acts with a commercial purpose (read: the streaming service). The Court of Appeal therefore set aside the earlier judgment by the court of The Hague and ruled that no equitable compensation is due for offline streaming copies(tethered downloads).

Questions to the Court of Justice

The case was referred in cassation to the Supreme Court, which decided on 17 May to refer the following preliminary questions to the ECJ. It is therefore up to the ECJ to tie the knot on this issue.

1. Can a reproduction with the characteristics described above in 2.3 at (i)-(iii) (offline streaming copy or tethered download), having regard also to the three-step test (Art. 5(5) Copyright Directive), be classified as a “reproduction (…) made by a natural person for private use, and without any direct or indirect commercial purpose” within the meaning of Art. 5(2)(b) Copyright Directive?

2. Is a national regulation under which the home copying exception does not include offline streaming copies consistent with the objectives of the Copyright Directive, including a high level of copyright protection, a fair balance between the interests of the rightholder and the interests of the user, and a coherent and technologically neutral application by Member States of the exceptions and limitations?

We are monitoring this case and will keep you informed of further developments!