McDonald’s reversal shines spotlight on proving genuine use in Poland

The EUIPO Board of Appeal has made headlines by overturning the Cancellation Division’s cancellation of McDonald’s BIG MAC trademark in 2019, which itself sent shockwaves throughout the trademark landscape. However, this reversal begs the crucial question: what is sufficient evidence to prove genuine use – and how much is enough?

The Cancellation Division based its decision to terminate the mark’s registration on its determination that the evidence of use presented by McDonald’s was insufficient, ruling that the fast-food giant failed to demonstrate genuine use of the BIG MAC trademark on the EU market.

The decision reiterated to brands – even those as powerful as McDonald’s – the importance of proving their mark’s use with high-quality evidence, rather than banking on its notoriety.

Judging the value of evidence

According to settled case law in Poland, grouping items of evidence can also help establish genuine use even if each item, individually, would be insufficient to prove such use (Supreme Administrative Court, in the judgment of 2019-10-07, II GSK 2051/17).

Analysis of recent judgments shows that the most important types of evidence for proving genuine use are invoices or bills attesting to specific purchase and sale transactions with consumers and featuring a date and specified country of use. Order forms, letterhead and commercial documents, including contracts, as well as packaging, labels, catalogues and advertising material are also accepted. However, these secondary forms of evidence count only if they are directly related to the aforementioned transactions (Supreme Administrative Court, in the judgment of 2021-18-05, I GSK 894/18).

Increasingly popular forms of evidence – such as print-outs from websites on which a good is sold under its corresponding trademark, brochures and advertising materials, social media pages and financial documentation – can also help establish genuine use. However, it is crucial to note that the presence of the trademark on a website and proof that products or services bearing the mark have been offered to the public online can only prove genuine use if the website shows the place, time and extent of the use (Supreme Administrative Court, in the judgment of 2022-17-95, I GSK 1782/18).

Polish administrative courts are also of the opinion that pro forma invoices are unsatisfactory evidence of genuine use. These documents are issued to contractors to provide the details of a transaction and possible payments and may contain an offer to conclude a transaction, a request for payment, a proposal or an announcement to issue an invoice. However, without any other accompanying evidence, such a document does not confirm the use of a trademark (Provincial Administrative Court in Warsaw, in the judgment of 2021-13-09, VI SA / Wa 1632/21).

The extent of market representation

Polish courts assert that genuine use must be certain and stable; in order to possess these features, the presence of the mark on the market should be significant (Supreme Administrative Court, in the judgements of 2006-24-05, II GSK 70; 2009-12-03, II GSK 762/08; 2022-05-04, II GSK 2606/21). This means that the mark’s use cannot be symbolic and must aim to gain a foothold in the market or maintain market position. 

Genuine use depends on the context of a particular case and the characteristics of the goods or services concerned on the corresponding market.

In many Polish cases, administrative courts have ruled that an insignificant scope of market activity proved genuine use. For example, one brand’s presentation of 42 invoices and inquiries within a three-year period was enough to prove genuine use for transport services served by a one-person entity (Provincial Administrative Court in Warsaw, in the judgment of 2016-18-01, VI, SA/Wa 1875/15). In another case regarding a niche product, the simple introduction of a few thousand goods to the market represented a commercial effect, thus proving genuine use (Supreme Administrative Court, in the judgment of 2019-10-07, II GSK 2051/17). These cases reveal that low sales numbers are not necessarily an argument against genuine use – as long as the trademark’s use is economically justified.

The importance of timing

Given that a registration’s validity can hinge on genuine use, proof of this must correspond to the timing of the mark’s registration. Evidence from later dates unrelated to the time of registration does not constitute evidence of genuine use. (Provincial Administrative Court in Warsaw, in the judgment of 2020-22-12, VI SA/Wa 1364/20). However, evidence relating to the periods before and after registration should be subject to examination – provided that it supports the formation of conclusions about the circumstances during those periods (Supreme Administrative Court, in the judgment of 2019-10-07, II GSK 2051/17).

The utility of CP12

The CP12 Evidence in Trademark Appeal Proceedings: Filing, Structure and Presentation of Evidence and the Treatment of Confidential Evidence is the first convergence initiative regarding trademark appeal proceedings. CP12 establishes guidelines with regard to filing, structuring and presenting evidence before appeal bodies and the IP offices of EU member states and details the treatment of confidential evidence in trademark appeal decisions.

The CP12 Recommendations offer guidance on:

• the types of evidence and their admissibility in appeals;
• the means and sources of evidence (including online evidence);
• how to establish the relevant date of evidence;
• the ways to present evidence (including market surveys); and
• the confidentiality of evidence (confidential data and anonymisation).

The Polish Patent office accepted the CP12 Recommendations on 30 June 2021; as such, they are binding in proceedings before the office. Conversely, they are not binding for cases brought to Polish courts – where the rules regarding evidence are determined by civil and administrative procedural codes.

While following CP12 guidelines alone is insufficient to prove genuine use, they do provide valuable assistance in collecting and filing helpful evidence.

Lessons for trademark owners and applicants

As each case is different, there is no one-size-fits-all method of providing or assessing evidence that proves a trademark’s genuine use.

The burden of the laborious, expensive process of collecting and presenting evidence of genuine use falls on the trademark owner. The items of evidence they submit should be examined diligently and grouped together to establish the necessary facts – even though each piece of evidence, taken individually, would be insufficient to prove such use.

Conversely, it is the requirement of the Polish Patent Office or administrative court involved to reasonably judge this evidence and taken into account the scope of the right holder’s market activity.