By Hayden Nelson
In the recently decided Federal Court case, McD Asia Pacific LLC v Hungry Jack’s Pty Ltd [2023] FCA 1412, the headline outcome was that his Honour, Stephen Burley, decided that Hungry Jacks’ ‘Big Jack’ trade mark was not deceptively similar to and consequently did not infringe on McDonalds’ ‘Big Mac’ trade mark. This case has understandably received large yet shallow media attention and analysis.
FACTUAL BACKGROUND
Hungry Jacks originally filed their ‘Big Jack’ trade mark in November 2019 and their ‘Mega Jack’ trade mark in August 2020 on the Australian Trade Mark Register in the classes related to fast food (meaning they had exclusive trade mark rights for this specific category of goods). These trade marks were soon accepted, and Hungry Jacks began selling burgers under the ‘Big Jack’ and ‘Mega Jack’ names in 2020. McDonalds did not choose to oppose either of these trade marks in the two-month opposition window that the legislation provides.[1]
McDonalds has owned registrations for ‘Big Mac’ in relation to fast food since its filing date in August 1973 and likewise has owned the ‘Mega Mac’ trade mark since February 2013.
McDonalds commenced legal proceedings against Hungry Jacks in October 2020.
SUMMARY OF ARGUMENTS & DECISIONS (Trade Mark Infringement)
These proceedings boiled down to two main claims.
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INFRINGEMENT PROCEEDINGS:
Under the Trade Marks Act 1995 (Cth) (“TMA”), McDonalds launched infringement proceedings and argued that Hungry Jacks’ ‘Big Jack’ was deceptively similar to their ‘Big Mac’ trade mark (and similarly argued that ‘Mega Jack’ infringed on ‘Mega Mac’).
The layperson may think “hold on, well of course they’re similar! It was clearly an intentional marketing strategy by Hungry Jacks!” Under cross-examination, Scott Baird, the Chief Marketing Officer of Hungry Jacks accepted that there were “obvious links between the two names”[2] and acknowledged there was an “element of cheekiness” involved in intentionally naming ‘Big Jack’ what it was named. However, this intention is but one factor that is taken into account.[3]
His Honour wasn’t prepared to accept McDonalds’ theory that Hungry Jacks’ board directors, who had final decision-making authority, had an intention to mislead consumers. The board did not give evidence, only the CMO did,[4] which his Honour was prepared to rely on as being authoritative enough for practical purposes.
The term ‘deceptively similar’ is defined in section 10 of the TMA as ‘if it [the trade mark] so nearly resembles that other trade mark that it is likely to deceive or cause confusion’ and has been further defined by common law precedent (i.e., from how courts have decided cases). The main test for deceptive similarity comes from Shell.[5] To paraphrase the test, the comparison is made between a normal person’s imperfect recollection of the applicant’s trade mark (i.e., their memory of the McDonalds’ ‘Big Mac’), and their impression of the respondent’s trade mark (i.e., Hungry Jacks’ ‘Big Jack’) as it has been actually used.
Over 14 paragraphs, his Honour analysed the similarities between the trade marks in reference to this above test, but ultimately concluded that they were not deceptively similar. As his Honour states, ‘[a]lthough both are BIG, the idea conveyed by JACK and MAC is different’.[6] His Honour also found for similar reasons that ‘Mega Jack’ was not deceptively similar to ‘Mega Mac’.[7]
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VALIDITY CHALLENGE:
McDonalds also sought to cancel and remove the Hungry Jack’s ‘Big Jack’ trade mark from the register. McDonalds failed on all 3 grounds they argued.
Firstly, McDonalds ran a similar ground, as to that in their infringement proceedings — that the Hungry Jacks’ trade mark was substantially identical or deceptively similar to McDonalds’ trade mark under section 44 of the TMA. His Honour, in the name of consistency, found that McDonalds failed on this ground.[8]
Secondly, often run in conjunction with a section 44 ground, is the section 60 ground of the TMA which is broader in that the applicant party does not need to prove that the marks are deceptively similar. They only have to prove that the earlier mark, i.e., ‘Big Mac’, had a substantial reputation before the filing date of the respondent’s mark, and that because of this reputation, the use of the respondent’s trade mark, i.e., ‘Big Jack’, was likely to deceive or cause confusion. McDonalds presented evidence of ‘an enormous reputation’[9] of the ‘Big Mac’ trade mark from 50 years of selling and promoting that particular burger which his Honour accepted. Ironically, it was because of this large reputation, that his Honour found that the notional person would be able to clearly remember the ‘Big Mac’ trade mark and spot the differences it had with ‘Big Jack’. Hence, consumers would not be deceived or confused.[10]
Thirdly, McDonalds also argued under section 88(2)(c) of the TMA that at the time of commencement of these proceedings, Hungry Jacks’ trade mark was likely to deceive or cause confusion. This was quickly dismissed by his Honour, as ‘Big Mac[‘s]’ reputation at the commencement date and filing date (relevant to the section 60 ground), was materially the same.[11]
CONCLUSION:
These legal fights between corporate fast-food titans may seem distant from the concerns of medium-sized and small businesses as well as sole traders. Nevertheless, it may be prudent to register a trade mark to stop rival businesses from trying to imitate your goods and services.
This article is not meant to act as legal advice and serve the purpose of providing academically generalised information regarding the general principles of Intellectual Property Law. If you require qualified legal advice on anything mentioned in this article, our experienced team of solicitors at Foulsham & Geddes are here to help. Please get in touch with us on 02 9232 8033 today to make an enquiry.
[1] McD Asia Pacific LLC v Hungry Jack’s Pty Ltd [2023] FCA 1412 [75] (‘McD’).
[2] Ibid [77].
[3] Ibid [38].
[4] Ibid [117].
[5] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407.
[6] McD (n 1) [105].
[7] Ibid [126].
[8] Ibid [138].
[9] Ibid [145]
[10] Ibid [147].
[11] Ibid [150].