BIG MAC smashes burger BIG JACK
The buns have been burned and there is sauce on the floor as the Federal Court hands down its decision in the great burger war between McDonald’s and Hungry Jack’s – McD Asia Pacific LLC v Hungry Jack’s Pty Ltd  FCA 1412 a single judge decision before Justice Burley.
In Australia, McD Asia Pacific LLC and McDonald’s Australia Limited are the licensor and authorized user of the McDonald’s restaurants and brands; Hungry Jack’s Pty Ltd is a franchisee of Burger King Corporation and a hamburger flipping competitor of McDonald’s.
Whilst a hamburger might name its daughter Pattie, in 2020 Hungry Jack’s decided to name its new hamburger products BIG JACK and MEGA JACK.
McDonald’s at the time was the registered owner of the trade marks BIG MAC and MEGA MAC and had missed filing an opposition against the Hungry Jack’s marks during the registration process so it was straight off to the food court.
If you have to ketchup with the matter, the main claims made in the proceedings were:
- The use of the trade marks BIG JACK and MEGA JACK in respect of hamburgers infringed their BIG MAC and MEGA MAC trade marks under s120 of the Trade Marks Act
- The BIG JACK trade mark should be cancelled on the Register
- That Hungry Jack’s had breached the Australian Consumer Law as it had misrepresented to consumers that the BIG JACK hamburger contained 25% more Aussie beef than the BIG MAC hamburger.
Hungry Jack’s defence and cross-claims
- The BIG JACK mark is registered, should not be cancelled and thus a complete defence to infringement under s122(1)(e) of the Trade Marks Act
- The MEGA MAC trade mark should be removed for non-use
- The claims regarding the meat percentages of the two burgers were not a misrepresentation
For those who prefer their order to-go the court found:
BIG JACK v BIG MAC – not deceptively similar
MEGA JACK v MEGA MAC – not deceptively similar
Which means: No Infringement
The BIG JACK mark – no cancellation
Which means: No infringement
The MEGA MAC mark non-use– only partial removal but hamburgers remain in the registration
The meat content comparison claims – were misleading or deceptive conduct
Which means: breach of s18 of the Australian Consumer Law by Hungry Jack’s
For those that like fries with that, let’s get to the nugget of the issues.
The case had been heard prior to the High Court decision that was handed down in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd  HCA 8. However following that decision the parties filed additional submissions and the findings of the High Court were applied by Justice Burley in making his decision.
The Selfcare decision confirmed that the reputation that McDonald’s and Hungry Jack’s had in their various trade marks should not be considered when comparing the trade marks and reaching a decision as to whether the marks were deceptively similar. In the words of Justice Burley “Each mark must be considered afresh, shorn of knowledge of the reputation of both.”
This meant, amongst other things, that McDonald’s stable of “Mac” containing marks and consumer familiarity with McDonald’s products and this family of marks was not considered when the competing marks were compared. Justice Burley suggested that there was a degree of artificiality in the approach but he threw the pickles on the ceiling and pushed on.
During his analysis of the BIG MAC and BIG JACK marks the word “big” was treated as being laudatory and descriptive of a large hamburger.
In respect of the MAC component of the McDonald’s mark, His Honour stated as he was required to ignore the reputation of McDonald’s and the possibility that consumers would see it as an abbreviation of that name; he felt that it was more likely that the notional consumer would consider “Mac” to be understood to be “a coined or unusual forename or surname, which may be Scottish or Irish, an abbreviation of a longer name or a word conveying no particular meaning”. He thought that BIG MAC as a whole created the idea of something that was large with Mac being the name of the product.
In respect of the JACK component of the Hungry Jack’s mark it was considered to be an easily recognized forename and that whilst it could have other meanings these meanings were unlikely to be considered by most consumers e.g. a tool for lifting a car, the name of a playing card or the game jacks. It was decided that it was more likely that a consumer would think that BIG JACK was a large personified hamburger.
When the imperfect recollection of the consumer was contemplated it was considered unlikely that a consumer would confuse MAC and JACK or be caused to wonder if the products sold under the marks came from the same source (even if they did have similar sauce). The word “Jack” was considered a recognizable forename known by most consumers where “Mac” was considered an unusual name or abbreviation. His Honour thought that consumers were attuned to noticing differences in forenames giving examples such as Harry and Barry, Pat and Matt, Ryan and Brian and Ronald and Donald. Accordingly, the visual and phonetic differences in the marks were considered sufficient such that confusion between the marks was unlikely.
The finding was the same for the comparison of MEGA MAC and MEGA JACK given that the “Mega” component also meant huge.
Section 120(2) of the Trade Marks Act, which deals with infringement, has a defence to infringement if the Defendant is able to show that using the sign in the manner that it did is not likely to deceive or cause confusion. The authorities advise that it is relevant to consider the intention of the Defendant in adopting and using the mark as one factor to determine whether there is a reasonable probability of their activities leading to deception or confusion.
These are images from the judgement of the Hungry Jack’s products and their marketing taglines:
Whilst Hungry Jack’s accepted there had been an element of “cheekiness” when they had adopted the BIG JACK name, they stated that it was adopted because they wished to tempt consumers to compare the products.
In finding there was not an intention to deceive or confuse His Honour found that:
“the fact that Hungry Jack’s set out to compete with the BIG MAC by producing a similar club sandwich style hamburger that seeks to emulate the taste of the BIG MAC, including by use of a particular tagline, does not of itself aid McDonald’s argument unless there was an intention to confuse consumers by the choice of the impugned trade mark” … “Hungry Jack’s wished to compete with McDonald’s’ BIG MAC for the sale of a similar hamburger, and the use of BIG JACK was likely to draw attention to that fact for consumers familiar with the McDonald’s product. Both trade marks use the word “big” and have other similarities as noted above. However, the desire was to compete by a choice of name that had echoes of the BIG MAC name but was nonetheless recognisably different to it. I consider that the purpose was not to mislead but to invite a comparison and contrast.”
As McDonald’s had surprisingly missed opposing the BIG JACK trade mark prior to its registration, it was required to run a cancellation action before the court. This action is taken on similar grounds as would have been available at an opposition.
The main grounds pursued for this action were s44 being deceptively similar to the prior registered BIG MAC and MEGA MAC trade marks and s60 & s88 that because of the reputation acquired by the BIG MAC mark use of BIG JACK was likely to deceive of cause confusion. Interestingly the s62A ground that the mark was filed in bad faith was abandoned in McDonald’s closing submissions.
The s44 ground obviously failed due to the previous finding that the marks were not deceptively similar. The s60 & 88 grounds failed because the BIG MAC trade mark had been used in Australia for almost 50 years without any change and had built an enormous reputation. Accordingly, it was determined that a consumer encountering the BIG JACK trade mark would be familiar with such enormous reputation in the BIG MAC trade mark, immediately notice the difference in the two marks and would not wonder whether BIG JACK came from McDonald’s. The unfortunate burden of fame it seems.
Non-Use Cross Claim Against MEGA MAC
Use of the MEGA MAC mark in respect of beef hamburgers was established and His Honour exercised his discretion to not remove some other related goods such as pork sandwiches, fish sandwiches and chicken sandwiches which meant that only items unrelated to the action such as “biscuits, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar” were removed from the registration.
In the event you were wondering, this is a MEGA MAC:
Misleading and Deceptive Conduct
Hungry Jack’s had run two television commercials for the BIG JACK product which claimed that the product contained 25% more Aussie Beef when compared to a competitor’s product. Hungry Jack’s conceded that that the competitor mentioned was McDonald’s.
McDonald’s brought in the experts to measure the weight of the competing meat patties. A simple task you would think but is that with or without the cheese, what about the pickles? It seems the covert operatives visited a number of Hungry Jack’s stores and ordered the BIG JACK and also McDonald stores to secure the BIG MAC but in both purchases asked for no special sauce, pickles or cheese – which surely would have raised an eyebrow in the drive thru. The patties of the burgers which had been stripped of their glory were weighed.
There was dispute as to whether the correct test should have been weighing the raw or cooked patties for the comparison. As a result of the adverts in question showing cooked or cooking burgers it was decided that consumers would be expecting that they were eating 25% more Aussie beef at the time of eating the meal.
Alas it seems that there was only a 12 to 15% difference in the weight of the cooked patties between the two competitors and thus Hungry Jack’s was found to have made a misrepresentation which had amounted to misleading and deceptive conduct. Perhaps Hungry Jack’s could have been saved if consumers had been more in the practice of having their burgers a little more like steak tartare as the raw weight of the burgers did meat-the-claim but the product is only served like this very rarely…
A very fine line has been trodden by Hungry Jack’s in adopting a deliberate strategy to try and turn the eyes and curiosity of “brand switchers and lighter users” of McDonald’s products toward their offering. Had McDonald’s opposed the BIG JACK trade mark prior to registration and perhaps tied it up in litigation for years over the registration of the mark, then maybe Hungry Jack’s would not have been so brash.
So at this stage of the proceeding a key takeaway for all traders is to ensure the maintenance of suitable watches of your highly prized and core brands, as well as watches of the trade mark filings made by your key competitors so that getting caught in the expensive pickle of protracted litigation may be avoided.
No doubt McDonald’s will think that it is on a roll and will relish the opportunity to seek an appeal to get to the sauce of the issue so time to clean the grill and wait for the next shift.
*every pun intended