McDonald’s has failed in its trade mark infringement claim against Hungry Jack’s over the burger companies’ respective uses of their BIG MAC and BIG JACK trade marks.
McDonald’s claimed that its competitor’s registered marks for BIG JACK and MEGA JACK infringed the famous BIG MAC mark and McDonald’s lesser known MEGA MAC mark. McDonald’s sought the removal of the Hungry Jack’s marks from the trade mark register.
The Federal Court rejected McDonald’s claims, finding that BIG JACK/MEGA JACK were not deceptively similar to BIG MAC/MEGA MAC. The Court found that the words BIG and MEGA were descriptive and laudatory, in this case in relation to hamburgers. The Court also found that JACK is sufficiently different to MAC, both visually, aurally and in what it may connote to consumers, such that consumers would not be confused between the marks BIG JACK and BIG MAC and would not consider that goods sold by reference to those marks came from the same source. The Court helpfully noted that “people are likely to be attuned to noticing differences in forenames (Harry is not Barry, Pat is not Matt, Ryan is not Brian, Ronald is not Donald)”.
The judgment clarified the test to be used in cases of alleged trade mark deceptive similarity as set out by the High Court earlier this year in a dispute between the owners of BOTOX and PROTOX1. In particular, the Federal Court clarified that the test for deceptive similarity involves a comparison based on the typical consumer’s imperfect recollection between the applicant’s registered mark (BIG MAC) and the actual use of the respondent’s mark (BIG JACK) in terms of the way in which goods of the relevant kind are typically bought and sold (at quick service restaurants, drive-thru and food delivery apps) but not including any actual surrounding circumstances such as disclaimers or other marks used on packaging and advertising.
It was also noteworthy, though not determinative, that McDonald’s had not adduced any evidence of deception or confusion. Further, the Court rejected McDonald’s claims that Hungry Jack’s had adopted the BIG JACK name with the intention of creating confusion amongst consumers. Instead, the Court accepted that Hungry Jack’s, whilst engaged in an exercise of “cheekiness”, was seeking to have consumers compare their new BIG JACK burger with the McDonald’s equivalent, rather than confusing consumers between the two.
McDonald’s also claimed that advertisements for the BIG JACK which claimed the burger contained “25% more Aussie beef” were misleading and deceptive. Whilst Hungry Jack’s demonstrated that its burgers contained 25% more raw beef, the Court considered that consumers would believe that the “25% more claim” related to the weight of the patty after the cooking process was completed. In that case, McDonald’s showed that the BIG JACK cooked patties did not weigh 25% more than the BIG MAC patties and the claim for misleading and deceptive conduct was successful.
Addisons acted for Hungry Jack’s.
1 Self Care IP Holdings Pty Ltd v Allergan Australia Pty Limited  HCA 8, as summarised in our Insight: Smooth sailing for Botox® alternative: High Court injects itself into the trade mark law considerations of deceptive similarity