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Takeaways from burger wars Two recent decisions cover •a great deal of trademark law Gaelyn Scott
T ENSafrica
wo recent trademark decisions, one in the Netherlands and one in the UK, both involve what might be described as “burger marks”. Between them, they cover a lot of trademark law. The Dutch case has been running for about 20 years. What happened here was Wendy’s, the US fast-food chain, applied to register the name Wendy’s as an EU trademark for fast-food services. But a small Dutch snack bar called Wendy’s, situated in the remote Dutch province of Zeeland, stood in the way. The Dutch business has a Benelux registration for the trademark Wendy’s, a registration that covers fastfood services and foodstuffs. The US company responded by attacking the registration for nonuse, claiming the trademark had not been used in a normal commercial manner. To put it in other terms, there had been no genuine use of the trademark. What makes this case interesting is the trademark had quite clearly been used for fast-food services, but not in the way the US company
seemingly thinks a fast-food trade mark should be used. The use that was established was used in relation to a single small snack food business. There was no proof of use in relation to a chain of outlets. The Dutch supreme court held that this one-outlet use was sufficient to keep the registration alive. It made the point that in the Netherlands snack bar trademark usage generally comprises small owner-run eateries rather than chains. The proof of use of the trademark on the shopfront as well as on receipts and bags was sufficient. The fact that the trademark had been used in only one of the three countries covered by a Benelux registration (the Netherlands, but not Belgium and Luxembourg) was not relevant. The court did, however, feel that the situation was different insofar as the registration covers food products.
THE PROOF OF USE OF THE TRADEMARK ON THE SHOPFRONT AS WELL AS ON RECEIPTS AND BAGS WAS SUFFICIENT
WHAT’S IN A NAME?
CLEAR BENEFIT /123RF — JETCITYIMAGE The court held that in the Netherlands normal, genuine use of a trademark for food products involves goods manufactured by large companies. This meant the sale of individual Wendy’s hamburgers did not amount to genuine use of the trademark Wendy’s. The upshot was the registration was valid for fast-food services, but not for food products.
BAD FAITH The UK case involved another fast-food giant, McDonald’s. What happened here was that a company called Children’s Cancer Aid Limited applied to register the trademark McVegan in the
food classes, an application that covered vegan sausages and vegan burgers. Unsurprisingly, McDonald’s opposed the application on various grounds. One of these was the claim that the application had been filed in bad faith. There was evidence the applicant had previously applied to register the trademark McBaileys, an application that had been successfully opposed by Diageo, the company that owns the brand Baileys Irish Cream. So the applicant had a history of copying well-known trademarks. Perhaps more importantly, there was evidence that the applicant had approached
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of the trademark McVegan would take unfair advantage of, or be detrimental to, the distinctive repute or character of the registered trademark McDonald’s. The hearing officer accepted the Mc trademark family is well established, citing McChicken, McNuggets and McCafe. The hearing officer accepted the UK public will probably believe any food trademark that has the prefix Mc is connected with McDonald’s. The public will almost certainly believe the trademark McVegan is part of the Mc family.
McDonald’s prior to filing its application for McBaileys, with a view to establishing some sort of partnership arrangement.
UNFAIR ADVANTAGE When this approach was rejected the applicant bizarrely threatened to open a McVegan next to every McDonald’s outlet in the UK, suggesting it would manage this by partnering with competitors of McDonald’s. Unsurprisingly the hearing officer had little hesitation accepting that the application had been filed in bad faith. McDonald’s also claimed unfair advantage; in other words, it argued that adoption
The hearing officer went on to say that even if the goods or services to be registered under the trademark McVegan are dissimilar to those offered by McDonald’s, the McDonald’s trademark will still be brought to mind. As a result, the McVegan trademark will take unfair advantage of the earlier McDonalds trademarks. The public will assume there is some economic link between the owners of the McVegan trademark and McDonald’s. This assumption will provide the owner of the McVegan trademark with a clear benefit, in the sense that it will make it easier to get its brand up and running. As mentioned, two decisions with a great deal of content. Or perhaps burgers with a lot of filling!