Hungry Jack’s in a legal pickle with McDonald’s

McDonald’s claims rival Hungry Jack’s has infringed its “Big Mac” trade mark with their newest burger “Big Jack”.

Fast food giants McDonald’s and Hungry Jack’s are going head to head after McDonald’s Asia Pacific launched Federal Court proceedings against Hungry Jack’s on August 28.

The fast food standoff began when Hungry Jack’s started promoting new burger the Big Jack, in Australia in July. McDonald’s alleges that Hungry Jack’s “deliberately adopted or imitated” the “distinctive appearance or build” of their Big Mac. The burgers and their ingredients do look very similar and the promotional material describing the Big Jack as comprising “two flame-grilled 100% Aussie beef patties, topped with melted cheese, special sauce, fresh lettuce, pickles and onions on a toasted sesame seed bun” doesn’t help.

screenshot of tweet from Hungry Jacks AU july 2020
                                            Tweet from July.
"Two all-beef patties, special sauce, lettuce, cheese, pickles, 
onions – on a sesame seed bun". Sound familiar?

McDonald’s have been selling Big Macs since the 1970s, and claims it has “acquired a substantial and valuable reputation in Australia”.

Hungry Jack’s is the Australian franchisee of American burger group Burger King, founded by Jack Cowin in 1971.

Hungry Jack’s filed an Australian trade mark application for Big Jack under Class 29 and Class 30 last November, and it was accepted later in February 2020 without any published opposition. They really flew under McDonald’s radar with that one! Hungry Jack’s also filed a trade mark application in August 2020 for Mega Jack and it is currently awaiting examination.

In addition to cancellation of the granted marks and an injunction for destruction of all promotional materials related to the burgers, McDonald’s is seeking damages.

It will be interesting to see the outcome of the proceedings here in Australia, given that McDonald’s has received both favourable and unfavourable decisions in the past.

In early 2019, McDonald’s lost the trade mark for the Big Mac in the EU after Irish fast food chain Supermac’s successfully challenged McDonald’s trade mark rights.

However back to Australia in 2018, Brisbane-based Burger Urge were forced to pull their Alpaca burger dubbed the ‘Big Pac’ from its restaurants after McDonald’s issued it a cease and desist notice.

Reminders about infringement

1. Consider if there is a likelihood of confusion. How similar are the goods/services – is there a link? Avoid using stylised fonts, logos etc. associated with an existing brand.

2. Cheeky is not a defence. As Australians we may tend to poke fun at the big players with seemingly innocuous good humour. However, situations similar to the above highlight that it isn’t wise to try to leverage well-established brands, even for a marketing stunt. Do not be complacent.

If you would like to discuss your trade mark concerns with a trade marks expert, please contact us and we can arrange a consultation with one of our attorneys via Zoom or in person.