(Big Mac Burger Vs Supermac’s Case, a Lesson)

By: Dr. Iman Sjahputra, SH., Sp.N., LL.M

The owner and management of the world’s renown fast food restaurant McDonald’s may not sleep soundly since their glorious trademark is deleted by the European Union Trademark Office (European Union Intellectual Property Rights Office). To be exact, in Alicante, Spain.

Why? We definitely know the trademark McDonald’s, whose name is very familiar to us, especially their outlets exist and located at strategic locations all over the world. The McDonald’s food menu consists of various type of chicken or beef hamburgers. Generally, these burgers are very popular amongst kids and teenagers. Apparently, one of the burger product menus holds a trademark that is “Big Mac”, which has been produced by McDonald’s since 1967. This trademark triggered a conflict with its competitor “Supermac’s” from Ireland. McDonald’s on the other hand, states that besides using the name “Mc” such as McFlurry, McNuggets, McMuffin, there is also trademark “Big Mac” which was registered back in 1996 by McDonald’s company in the European Union.

The registration of trademark “Big Mac” makes all similar stores/products upset such as Supermac’s. Although Supermac’s has opened more than 100 outlet branches, they cannot expand their companies in the European Union due to the existence of “Big Mac”. There is no other way other than to apply a trademark cancellation through the European Union Trademark Office (European Union IPR Office) which is a successful step taken by Supermac’s since the European Union Intellectual Property Rights Office deleted Big Mac which registered under the name of McDonald’s Corporation early this year, in January 2019. The arguments regarding the deletion are stated by the European Union Intellectual Property Rights Office. One of the arguments is that it has not been put to genuine use in the European Union within an uninterrupted period of five years before 2017, although McDonald’s submitted adverse claim with the affidavits such as print-outs from the internet such as promotions; posters; packaging and sales in Europe, but according to the Intellectual Property Rights Judge from the European Union Intellectual Property Rights Office, the evidences are not sufficient.

A proof of genuine use (Statement of Use) for a trademark existence is indeed a must since it is common for a party whom registers a trademark not to use it. As a result, other party who wishes to use such trademark cannot get trademark protection for their desired goods or services since it has been ‘blocked’ by registration by another party whose name registered under such trademark. Therefore, all the Trademark Laws all over the world (including Indonesia) requires the use or production of goods on a registered trademark. The Indonesia Trademark Law Year 2016, in one of the provisions states that a registered trademark that has not been used for 3 (three) consecutive years in a course of trades of goods and/or services may be requested for deletion in the form of a Lawsuit to the Commercial Court by a relevant third party. (Article 74 paragraph 1). The philosophy of the enactment of this article aims to protect those who want to trade and intend to use a desired trademark, however it has been registered in the name of a party that does not produce goods and or services. As a result, this may harm one party. There is a lot of cases of a non-use registered trademark in the Commercial Court in Indonesia. One of the interesting cases is IKEA International against the local IKEA. It began with the parties of the IKEA International, domiciled at 2 Hullen-bergweg, Netherlands, sued a Surabaya company, PT. Ratania Khatulistiwa due to the use of trademark “IKEA” even though it is a well-known trademark and has been used in numerous countries including Indonesia. However, in the Supreme Court Decision No. 264/K/Pdt-Sus/HKI/2015, the Supreme Court ruled the victory of the local Ikea, by considering whereas a Trademark which has not been used for 3 consecutive years since its registration date, may be deleted from the Trademark General List, based on the market survey result, without considering the credibility of the survey institute. Knowledge of judges outside the trial is not recognized as a legal fact, therefore, even though we acknowledge that Ikea has been established in Tangerang, Indonesia, such reasonings cannot be evidences of legal fact. Then, what about the producers whom register yet do not use their trademarks? Then they need to be cautious.

The author is an Intellectual Property Rights expert (Intellectual Property Rights, domiciled at Jakarta).