Campbell's vs McDonalds: Lessons for FMCG brands and trademark owners

Two high profile decisions in the EU and USA have recently highlighted the important role that evidence of trademark use plays in the maintenance and acquisition of trademark rights.  

As previously discussed here, in the EU McDonald’s European trade mark registration for ‘big mac’ was successfully cancelled by an Irish company, Supermac’s, due to the poor quality of the evidence filed by McDonald’s. Evidence of substantial sales, promotional materials, and website images were all deemed to have low evidential value. The EU Office held that such evidence did not reflect a real commercial presence for the BIG MAC trade mark for the goods and services claimed.

In the USA by contrast, The Campbell Soup Company successfully registered the term ‘chunky’ as a trade mark. The general position is that a single entity should not be granted exclusive rights to a term which is descriptive of the goods or services for which registration is sought. However, Campbell’s was able to provide clear evidence that it has used and promoted the term ‘chunky’ in the US on such a scale that American consumers identify ‘chunky’ as trade mark indicating a soup which originates from Campbell’s.

The evidence submitted by Campbell’s was substantial and included evidence of extremely well known TV shows such as Saturday Night Live and The Simpsons referring to Campbell’s ‘chunky’ brand, references to ‘chunky’ in the songs of well-known Hip Hop artists such as Ghostface Killah of the Wu Tang Clan, and evidence reflecting a $1 billion advertising spend on the brand since 1998.

The US Trade Mark Office held that the weight of evidence was sufficient to reflect that the term ‘chunky’ had entered into popular culture to the extent that, in relation to soup, the US consumer saw it as a trademark for products originating from Campbell’s. 

What you should take away…other than soup and a burger

The outcomes of these cases highlight the importance of documenting your trademark use, to ensure that you are in the strongest possible position to maintain or acquire strong enforceable trade mark rights.  It is essential that trademark owners, whatever their size, put in place a record keeping system which enables them to clearly reflect the use of their trademarks.

Use it or lose it!

If you own a trademark registration that is more than five years old it becomes vulnerable to cancellation if you cannot prove that you have used it for the goods and services it covers. Additionally, if you are seeking to prevent third party use or registration of a trademark the third party can ask that you provide evidence of use of your mark to support your claim.

Unregistered Rights

If you have used a trademark for a period of time but have not registered it, all is not lost. If you have evidence to show that the trademark identifies your goods and services as originating from your business then you may be in a position to claim unregistered rights