Use it or lose it – tales and lessons from Dishoom to McDonalds

Recent cases involving Dishoom and McDonald's illustrate how important it is to use trade marks to keep them on the register.

Entrenched in trade mark law is the principle of "use it or lose it" – that is, once registered, a trade mark is not entirely free from challenge. The registered holder must use their mark or risk losing it. For example, if a mark is not put to genuine use for a continuous five-year period at a time since its registration date, third parties may apply to revoke the mark¹. Third parties may also seek to invalidate a registered trade mark if it has become generic or commonplace in the trade for products and/or services for which it is registered². This is because the mark is no longer able to function as a trade mark (i.e. as a badge of origin). Examples of previously registered marks which have been invalidated on this ground include Escalator, Aspirin, Sellotape, Trampoline, AstroTurf and Jacuzzi.

Both of these avenues for removing marks from the register have been brought to the forefront of trade mark holders' minds following recent activity involving Dishoom and McDonald's.

In May, Dishoom, a restaurant group famous for its Bombay-inspired modern dishes, launched a bid to revoke the trade mark "Ruby Murray" in the UK. The trade mark is owned by London businessman, Tariq Aziz, for food and beverage related goods and services, namely inter alia "Curry; Curry spice mixes; Curry powders" in Class 30. Well-known as Cockney rhyming slang for curry, Dishoom's legal team argue that "Ruby Murray", which the popular Irani food chain uses as a heading for curries on its menu, as well as to describe one of its own dishes, has not been used commercially (or "in the course of trade" as the legislation sets out) by Mr. Aziz. Confirming the chain has no intention to register the mark itself, it was explained that Dishoom "wishes to remove the monopoly on the use of 'Ruby Murray' so it can be freely used by anyone when referring to curry".

Mr. Aziz was granted the trade mark for food and beverages, whether rightly or wrongly, in May 2019. In 2020, he set up Murray Ruby Limited for the purpose of providing takeaway foods and has since started offering restaurant services, albeit his North London premises are currently closed for refurbishment. Whilst Mr. Aziz has said he does not want his trade mark to be revoked, he has until 15 July 2024 to file a Notice of Defence and counterstatement, demonstrating his formal intention to defend his right. He may, at that stage, provide evidence showing the trade mark has been used in the course of trade during the relevant time period, or that there are "proper reasons" for non-use. He may use a further two-month period to file any such evidence. Should no notice of defence be submitted by the deadline, or should the evidence not be compelling, the trade mark will be revoked.

There is some argument to be had around whether the trade mark should have been granted in the first place. Ruby Murray is the name of a Northern Irish singer active during the 1950s who was popular across the UK during that decade. By the 1960s, her name had become the Cockney rhyming slang for curry. Indeed, upon the trade mark's registration, the singer's son voiced his anger at the UK Intellectual Property Office granting such a right. Notably, he said, "Everyone knows that Ruby Murray is Cockney rhyming slang for curry – it is part of our language and heritage. A government body should not be allowed to grant a single businessman the sole rights to use her name for financial gain.” Dishoom did not raise an argument that the term had become generic or commonplace in the trade, but the possibility remains.

McDonald's on the other hand, was tasked with defending its own trade mark registration for BIG MAC in Europe, which the General Court of the EU recently partially revoked (see our previous blogs on this here and here). The long-running saga began when Irish family-owned burger chain, Supermac's, retaliated against McDonald's' oppositions to some of its trade marks. Indeed, Supermac's applied to revoke McDonald's' trade mark registration for BIG MAC covering food stuffs including "meat sandwiches, fish and poultry products, edible sandwiches, services rendered…with operating and franchising restaurants".

Initially, in January 2019, the EU Intellectual Property Office ("EUIPO") revoked the BIG MAC trade mark in its entirety, reasoning that the trade mark was not put to genuine use for the goods and services claimed. However, upon McDonald's' appeal of that decision, at the end of 2022, the EUIPO Fourth Board of Appeal allowed the registration to be partially reinstated, therefore enabling McDonald's to claw back part of its registration for meat sandwiches, chicken sandwiches, and services relating to operating restaurants/takeaways. In its defence, McDonald's had provided around 700 pages of evidence, including consumer surveys.

Nonetheless, in the third instance finding on the matter following appeals by both sides, the General Court held the trade mark invalid for everything but "foods prepared from meat products, meat sandwiches; edible sandwiches", noting that McDonald's did not prove genuine use of BIG MAC for "chicken sandwiches", "foods prepared from poultry products" and the restaurant/takeaway operation services since the evidence put forward did not provide any indication of the extent of use of the trade mark, particularly concerning sales volumes and frequency of use.

Whilst the decision does not affect McDonald's' ability to use the BIG MAC mark (and arguably, the chicken/poultry products are included in the meat/edible wording which is retained in any event), it does limit the protection the registered trade mark offers, and may leave it relying on unfair competition and similar routes to enforce it.

Overall, both the Dishoom and McDonald's matters demonstrate the importance of making genuine commercial use of a trade mark, and of providing comprehensive and convincing evidence of that use.  Even globally well-known marks cannot ask tribunals to take their reputation for granted.  A trade mark owner should not rest on their laurels, whether that be because they think their mark is already well-known or because they think their mark is so unique that it will not become customary in the trade.