Big Mac vs Big Jack – a trade mark burger war
5 mins reading time
In the latest iteration of the burger wars that have been gripping Australian trade mark lawyers, McDonald’s had alleged that the Hungry Jack’s “BIG JACK” infringed McDonald’s “BIG MAC” trade mark, and that Hungry Jack’s registration of “BIG JACK” should be cancelled.
In a judgement handed down on 16 November 2023, the Federal Court of Australia in McD Asia Pacific LLC v Hungry Jack’s Pty Ltd [2023] FCA 1412, Justice Burnley had to consider four issues:
- Whether use of “BIG JACK” infringed the registered trade mark “BIG MAC”.
- Whether the “BIG JACK” trade mark should be cancelled.
- Whether McDonald’s “MEGA MAC” trade mark should be removed for non-use.
- Whether Hungry Jack’s had engaged in misleading or deceptive conduct in relation to the comparative weight of meat in the respective burgers.
McDonald’s lost on the first three issues, but won on the fourth.
The verdict
Justice Burnley acknowledged that the correct approach in comparing the “BIG MAC” and “BIG JACK” trade marks is to ignore the reputation in the “BIG MAC” mark. The trade marks must be considered from the slightly artificial perspective of a hypothetical consumer who is not familiar with McDonald’s.
Justice Burnley observed that “BIG” is a common descriptive or laudatory term used in burger names. So, it came down to a comparison between “MAC” and “JACK”. In considering the sounds and meaning of the respective trade marks, His Honour held:
“I do not think it likely that the typical consumers will confuse JACK for MAC or BIG JACK for BIG MAC or be caused to wonder whether hamburger products sold under and by reference to BIG JACK come from the same source or are affiliated with the trader who sells the BIG MAC.” [105]
Infringement question
His Honour considered the intention of Hungry Jack’s. Although intention doesn’t directly impact infringement, if the defendant selects a trade mark with the aim of misleading potential customers, it can be viewed as a reliable and expert opinion regarding whether their actions are likely to deceive.
Justice Burnley found no such intention on the part of Hungry Jack’s, though the use of “BIG JACK” may cause consumers to compare the “BIG JACK” with the “BIG MAC”, therefore allowing Hungry Jack’s to better compete with McDonald’s. Hungry Jack’s admitted “cheekiness in adopting the BIG JACK name”, but that’s not illegal.
Cancellation of “BIG JACK”
The cancellation of the “BIG JACK” trade mark was important to McDonald’s. Its infringement claim relied on it, as Hungry Jack’s registration of “BIG JACK” would otherwise provide it with a defence.
McDonald’s argued under section 88 of the Trade Marks Act 1995 (Cth) (Act) that “BIG JACK” should never have been registered for two reasons:
- under section 44 of the Act, “BIG JACK” was too similar to McDonald’s existing “BIG MAC” trade mark; and
- under section 60 of the Act, McDonald’s had such reputation in “BIG MAC” that use of “BIG JACK” would deceive or cause confusion.
The test of similarity under section 44 is the same as in relation to the earlier infringement question. McDonald’s failed to establish similarity on infringement and for the same reason failed on cancellation.
On the section 60 ground, Hungry Jack’s acknowledged McDonald’s’ reputation in “BIG MAC”. To succeed, McDonald’s needed “to show a real tangible danger of deception or confusion occurring.” The court did not believe that this was likely to occur, as a consumer would immediately perceive the differences in the marks, especially given the strong reputation and brand awareness of “BIG MAC”.
Removal of “MEGA MAC”
If a trade mark has not been used in Australia during the previous 3 years, its registration may be challenged under section 92(4)(b) of the Act.
McDonald’s had registered “MEGA MAC” in relation to “edible sandwiches, meat sandwiches”, but also in relation to “pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar”. It was agreed by the parties that “MEGA MAC” had not been used in relation to this second set of goods during the relevant non-use period of 27 July 2017 to 27 July 2020.
McDonald’s was able to show use of “MEGA MAC” in relation to meat hamburgers during the relevant period, but not in relation to any other goods. Nevertheless, McDonald’s argued that the Registrar of Trade Marks should exercise her discretion not to remove the trade mark in relation to the other goods.
The court held that though the trade mark was not used in relation to them, registration should be maintained in relation to “pork sandwiches, fish sandwiches and chicken sandwiches”, as they are sufficiently similar to hamburgers. “Bread” should also be retained, as they include hamburger buns, which are sufficiently close to hamburgers. However, though goods such as mustard, sauces, sugar and seasonings are ingredients for hamburgers, the connection between ingredients and the final cooked product is remote.
On this basis, it was determined that “biscuits, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar” should be removed from the register.
Small victory on a ‘big’ claim
Hungry Jack’s advertised that its “BIG JACK” contained “25% more Aussie beef” “when compared to competitor’s product”.
The cooked weight of the “BIG JACK” patties was no more than 15% greater than the “BIG MAC”. Hungry Jack’s argued that the comparison was made between the uncooked meat patties, based on the imagery and wording of its TV ads. The court rejected this argument, given that the imagery used was of cooked meat.
McDonald’s managed to score a small victory in the overall proceedings, having made out the misleading or deceptive conduct claim under section 18 of the Australian Consumer Law.
Key takeaway
Even if your cheekily-chosen trade mark ends up being legal, it can bring with it the risk of challenge. Fighting such an infringement challenge is costly, which may be fine for a well-resourced company like Hungry Jack’s. Even if the decision did not go their way, it’s likely Hungry Jack’s benefitted from the publicity that this fight brought its “BIG JACK” and “MEGA JACK” burgers.
However, for other businesses, the cost of sailing close to the wind can be crippling. In most cases, it’s best to play it safe. That means undertaking thorough clearance searches before adopting a trade mark.
We’re here to help
The Macpherson Kelley IP team can assist you with all aspects of trade mark law, from trade mark vetting searches to registration. If worst comes to worst, we can also assist in any infringement disputes.
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Big Mac vs Big Jack – a trade mark burger war
In the latest iteration of the burger wars that have been gripping Australian trade mark lawyers, McDonald’s had alleged that the Hungry Jack’s “BIG JACK” infringed McDonald’s “BIG MAC” trade mark, and that Hungry Jack’s registration of “BIG JACK” should be cancelled.
In a judgement handed down on 16 November 2023, the Federal Court of Australia in McD Asia Pacific LLC v Hungry Jack’s Pty Ltd [2023] FCA 1412, Justice Burnley had to consider four issues:
- Whether use of “BIG JACK” infringed the registered trade mark “BIG MAC”.
- Whether the “BIG JACK” trade mark should be cancelled.
- Whether McDonald’s “MEGA MAC” trade mark should be removed for non-use.
- Whether Hungry Jack’s had engaged in misleading or deceptive conduct in relation to the comparative weight of meat in the respective burgers.
McDonald’s lost on the first three issues, but won on the fourth.
The verdict
Justice Burnley acknowledged that the correct approach in comparing the “BIG MAC” and “BIG JACK” trade marks is to ignore the reputation in the “BIG MAC” mark. The trade marks must be considered from the slightly artificial perspective of a hypothetical consumer who is not familiar with McDonald’s.
Justice Burnley observed that “BIG” is a common descriptive or laudatory term used in burger names. So, it came down to a comparison between “MAC” and “JACK”. In considering the sounds and meaning of the respective trade marks, His Honour held:
“I do not think it likely that the typical consumers will confuse JACK for MAC or BIG JACK for BIG MAC or be caused to wonder whether hamburger products sold under and by reference to BIG JACK come from the same source or are affiliated with the trader who sells the BIG MAC.” [105]
Infringement question
His Honour considered the intention of Hungry Jack’s. Although intention doesn’t directly impact infringement, if the defendant selects a trade mark with the aim of misleading potential customers, it can be viewed as a reliable and expert opinion regarding whether their actions are likely to deceive.
Justice Burnley found no such intention on the part of Hungry Jack’s, though the use of “BIG JACK” may cause consumers to compare the “BIG JACK” with the “BIG MAC”, therefore allowing Hungry Jack’s to better compete with McDonald’s. Hungry Jack’s admitted “cheekiness in adopting the BIG JACK name”, but that’s not illegal.
Cancellation of “BIG JACK”
The cancellation of the “BIG JACK” trade mark was important to McDonald’s. Its infringement claim relied on it, as Hungry Jack’s registration of “BIG JACK” would otherwise provide it with a defence.
McDonald’s argued under section 88 of the Trade Marks Act 1995 (Cth) (Act) that “BIG JACK” should never have been registered for two reasons:
- under section 44 of the Act, “BIG JACK” was too similar to McDonald’s existing “BIG MAC” trade mark; and
- under section 60 of the Act, McDonald’s had such reputation in “BIG MAC” that use of “BIG JACK” would deceive or cause confusion.
The test of similarity under section 44 is the same as in relation to the earlier infringement question. McDonald’s failed to establish similarity on infringement and for the same reason failed on cancellation.
On the section 60 ground, Hungry Jack’s acknowledged McDonald’s’ reputation in “BIG MAC”. To succeed, McDonald’s needed “to show a real tangible danger of deception or confusion occurring.” The court did not believe that this was likely to occur, as a consumer would immediately perceive the differences in the marks, especially given the strong reputation and brand awareness of “BIG MAC”.
Removal of “MEGA MAC”
If a trade mark has not been used in Australia during the previous 3 years, its registration may be challenged under section 92(4)(b) of the Act.
McDonald’s had registered “MEGA MAC” in relation to “edible sandwiches, meat sandwiches”, but also in relation to “pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar”. It was agreed by the parties that “MEGA MAC” had not been used in relation to this second set of goods during the relevant non-use period of 27 July 2017 to 27 July 2020.
McDonald’s was able to show use of “MEGA MAC” in relation to meat hamburgers during the relevant period, but not in relation to any other goods. Nevertheless, McDonald’s argued that the Registrar of Trade Marks should exercise her discretion not to remove the trade mark in relation to the other goods.
The court held that though the trade mark was not used in relation to them, registration should be maintained in relation to “pork sandwiches, fish sandwiches and chicken sandwiches”, as they are sufficiently similar to hamburgers. “Bread” should also be retained, as they include hamburger buns, which are sufficiently close to hamburgers. However, though goods such as mustard, sauces, sugar and seasonings are ingredients for hamburgers, the connection between ingredients and the final cooked product is remote.
On this basis, it was determined that “biscuits, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar” should be removed from the register.
Small victory on a ‘big’ claim
Hungry Jack’s advertised that its “BIG JACK” contained “25% more Aussie beef” “when compared to competitor’s product”.
The cooked weight of the “BIG JACK” patties was no more than 15% greater than the “BIG MAC”. Hungry Jack’s argued that the comparison was made between the uncooked meat patties, based on the imagery and wording of its TV ads. The court rejected this argument, given that the imagery used was of cooked meat.
McDonald’s managed to score a small victory in the overall proceedings, having made out the misleading or deceptive conduct claim under section 18 of the Australian Consumer Law.
Key takeaway
Even if your cheekily-chosen trade mark ends up being legal, it can bring with it the risk of challenge. Fighting such an infringement challenge is costly, which may be fine for a well-resourced company like Hungry Jack’s. Even if the decision did not go their way, it’s likely Hungry Jack’s benefitted from the publicity that this fight brought its “BIG JACK” and “MEGA JACK” burgers.
However, for other businesses, the cost of sailing close to the wind can be crippling. In most cases, it’s best to play it safe. That means undertaking thorough clearance searches before adopting a trade mark.
We’re here to help
The Macpherson Kelley IP team can assist you with all aspects of trade mark law, from trade mark vetting searches to registration. If worst comes to worst, we can also assist in any infringement disputes.