McDonald’s Australia has lost a whopper of a court battle against Hungry Jack’s over its Big Jack trademark but won a related misleading and deceptive conduct claim against the chain, after a costly three-year bun fight.
McDonald’s Asia Pacific alleged in a Federal Court case filed in August 2020 that Hungry Jack’s infringed its Big Mac trademark by promoting a limited-edition burger in Australia under the “substantially identical … or deceptively similar” Big Jack trademark.
The trademarks relate to the burgers’ names and not their appearance, although McDonald’s argued in court that Hungry Jack’s “deliberately copied” the ingredients and appearance of the Big Mac.
Justice Stephen Burley, who presided over the fast-food feud, suggested in 2020 that claims about the appearance of the burgers was “clutter” and the case was only about the alleged deceptive similarity of the trademarked words.
In his judgement on Thursday, Burley concluded that “Big Jack is not deceptively similar to Big Mac”. He also found Hungry Jack’s separate Mega Jack trademark was not deceptively similar to McDonald’s Mega Mac.
However, he said Hungry Jack’s had engaged in misleading or deceptive conduct by suggesting in television advertisements that the Big Jack contained “25 per cent more Aussie beef” than the Big Mac.
Burley said the fact that Hungry Jack’s set out to compete with McDonald’s “by producing a similar club sandwich style hamburger” to the Big Mac “does not of itself aid McDonald’s argument unless there was an intention to confuse consumers” with the Big Jack trademark.
The judge accepted the evidence of Hungry Jack’s chief marketing officer, Scott Baird, that he was aware “there was an element of cheekiness” in naming the burger Big Jack, and “the name would likely be perceived as a deliberate taunt of McDonald’s”.
“I consider that the purpose was not to mislead but to invite a comparison and contrast,” Burley said.
Burley found the Mega Mac trademark was not liable to be removed from the trademarks register for non-use, as Hungry Jack’s contended in a cross-claim, but the registration should be amended to remove some types of food including biscuits, cakes, cookies and coffee.
Hungry Jack’s told the court in 2020 that allegations about the “lookalike” nature of the burgers were “misplaced” because “there’s no intellectual property in that material”. It argued in court documents that, if the burgers shared similarities, they are “common characteristics of hamburgers”.
After the lawsuit was filed, Hungry Jack’s escalated the beef by releasing television advertisements saying “someone’s suing Hungry Jack’s” but the Big Jack was “clearly bigger” than “some American burger” and had “25 per cent more Aussie beef”. McDonald’s added a claim for misleading or deceptive conduct to the trademarks infringement case.
Evidence before the court indicated that the weight of cooked Big Jack patties fell “far short” of being 25 per cent greater than the weight of Big Mac patties, Burley said.
Burley ordered the parties to confer on orders to give effect to his judgement.