Well, McDonald’s Australia thought so, but the Justice Stephen Burley in the Federal Court saw it differently.
Background
You may recall we reported on another case between to the two food giants in 2020 – The ‘Big MacJac’ trademark stirs up McDonald’s.
Well as it stands they also had another Court case in the same year, which has only just come to be decided late in 2023, also reported by the ABC News and SBS News.
In short, McDonald’s Australia sued Hungry Jack’s in the Federal Court of Australia in 2020 for use of the term Big Jack and for advertising that the Big Jack had 25% more meat in the Big Jack than the Big Mac.
Legislation
1. Trademark Infringements:
Subsection 120(1) provides that a registered trade mark is infringed if a person uses, as a trade mark, a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to the goods or services in respect of which the trade mark is registered.
A registered trade mark is also infringed (subsection 120(2)) if a person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:
- goods of the same description as that of goods (“registered goods”) in respect of which the trade mark is registered;
- services that are closely related to registered goods;
- services of the same description as that of services (“registered services”) in respect of which the trade mark is registered;
- goods that are closely related to registered services
2. Misleading & Deceptive Conduct
Section 18 of the Australian Consumer Law states that a business must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
Court Result
After three years of arguing, and significant cost, the Federal Court of Australia found: –
- Trademark Infringement result – that the Hungry Jack’s Big Jack burger had not infringed Big Mac trademark owned by McDonald’s. His honour held that “Big Jack is not deceptively similar to Big Mac”.
- There had been deceptive practice by Hungry Jacks in advertising that the Big Jack had 25 per cent extra meat than the Big Mac. Justice Stephen Burley: “Hungry Jack’s has engaged in misleading or deceptive conduct in breach of section 18 of the Australian Consumer Law.”
McDonald’s Australia hired experts (two Scientists) to visit stores nationally, take samples and submit this to the Court. After reviewing the results, the judge found Hungry Jack’s burgers contained “significantly less” than the 25 per cent additional beef advertised, and the company had breached consumer law through its marketing.
Hungry Jack’s sort to argue that the difference was in the uncooked meats, but failed to make that case.
Take Home Message
Be careful when making claims with false advertising.
It is also prudent for any business considering a new brand, to consult and have the brand assessed before adopting it for trade, and even before applying for a Registered Trademark.
Our lawyers are ready to assist you.
