The Chamber of Patent Disputes of Rospatent rejected the objection of the Russian representative office of Burger King (LLC Burger Rus) regarding the cancelation of legal protection of the Big Mac trademark in the name of McDonald’s Corporation for all goods of the 30th class of ICGS.
Burger King justified his position by the fact that the designation ‘Big Mac’ has already come into general use for the designation of goods of a certain kind, such as burgers with two cutlets on a triple bun. Consumers use ‘Big Mac’ as a term when ordering a similar dish in any fast food restaurant, including the Burger King chain.
Burger Rus also mentioned the decision of the European Union Intellectual Property Office (EUIPO), which terminated McDonald’s rights to the Big Mac trademark.
In turn, McDonald’s noted that the burger labeled ‘Big Mac’ is the visiting card of the right holder and is known in this status throughout the world.
So, Big Mac is offered exclusively in the McDonald’s restaurant chain, and was invented by Jim Delligatti, one of the first McDonald’s franchisees, managing several restaurants in Pittsburgh (USA).
McDonald’s also emphasized that Big Mac is not listed as a type of product in any dictionary-reference sources of information.
Rospatent in its conclusion mentioned that there was no information that, on the Russian market, prior to the date of trademark priority, a product was marked for a long time, marked with the ‘Big Mac’ sign and produced by various manufacturers independent of each other.
To recognize the fact that the designation ‘Big Mac’ has become a specific concept as a result of its long-term use by various manufacturers, it is necessary to prove that the mark was used as a product name by specialists in relevant industries, trade workers, consumers, included to explanatory dictionaries, encyclopedias, special reference publications. These materials were not provided by Burger King.
Also, Burger King was unable to provide objective evidence that the abolition of the monopoly of the right to the Big Mac sign will positively affect the purchasing power of the population of the Russian Federation, affect the development of competition in the public catering market, which will lead to lower prices for such products.