In recent months, a high-profile intellectual property case has unfolded in Australia, involving the fast-food giants McDonald's and Hungry Jack's. The dispute centred around McDonald’s well known Big Mac trade mark (and I’m getting hungry just thinking about it!).
Hungry Jack's, the Australian fast-food chain equivalent of Burger King, started aggressively promoting and selling a burger called the “Big Jack”. McDonald's argued that these names were confusingly similar to its registered trade mark. Additionally, McDonald's claimed that Hungry Jack's was engaged in misleading advertising under Australia consumer protection laws. Consequently, McDonald's sued Hungry Jack's for trade mark infringement, as well as misleading conduct.
During the hearing, Hungry Jack's marketing officer admitted there was an "element of cheekiness" in the choice of names. He acknowledged, "I was aware that the name would likely be perceived as a deliberate taunt of McDonald's." This admission suggests that Hungry Jack's was aware of the potential for confusion but saw it as part of the competitive game in the fast-food industry. The marketing officer further argued that such "taunts" are common in the fast-food business, drawing a parallel to the Australian practice of "sledging" in cricket, where players insult opponents to throw them off their game.
Finding in favour of Hungry Jack’s (where the “Burgers are Better” arguably), the court found no evidence of consumer confusion - "I am not persuaded that Hungry Jack's fashioned the name Big Jack for the purpose of misleading consumers." The judge referenced the recent Australian High Court decision in Self-Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, emphasizing that the reputation of the registered trademark (Big Mac) is not relevant in assessing similarity to the other trademark (Big Jack). The court categorized this case as one where Hungry Jack's sought to compete with McDonald's using a name that "echoes" Big Mac but is still "recognizably different." The court concluded that the trade marks were not confusingly similar because "Big" is a descriptive word, and the names Mac and Jack are phonetically distinct.
Aside from trademark infringement, there was also a claim of misleading advertising. Hungry Jack's had advertised that the Big Jack burger contains "25% more Aussie beef" than the Big Mac. McDonald's contended that this claim breached Australian consumer law, and experts confirmed that Hungry Jack's burger contained "significantly less" than the advertised 25% additional beef. As a result, McDonald's claim was successful on this front.
In conclusion, the Big Jack vs. Big Mac case highlights the complexities of trade mark law and the competitive nature of the fast-food industry. It also underscores the importance of understanding both the legal and cultural contexts in such disputes.