In a battle between two fast-food giants, some key takeaways for businesses are apparent.

The litigation between Mcdonald’s and Hungry Jack’s was, as described by Justice Burley in paragraph one of his judgement, “a dispute about trade marks, misleading or deceptive conduct and hamburgers.”

The dispute arose in response to Hungry Jacks’ menu changes, and an associated marketing campaign relating to the Big Jack and Mega Jack burgers.

In relation to trade marks, McDonald’s claimed that these names respectively infringed its BIG MAC and MEGA MAC trade marks because they were deceptively similar. As such, McDonald’s contended that Hungry Jack’s own trade mark registration ought to be cancelled. On this issue, the court found in favour of Hungry Jack’s.

As it related to the misleading and deceptive conduct contention, McDonald’s took aim at the Hungry Jack’s associated ad campaign, specifically, the claims that the Big Jack had “25% more Aussie beef” than the Big Mac. Hungry Jack’s provided evidence that their uncooked burger patties were, in fact, 25% greater, but the court ultimately held that Hungry Jack’s had breached the Australian Consumer Law since the cooked weight of beef in each respective burger was differentiated by approximately 12 – 15%.

The Trade Mark Battle

Justice Burley found that there was no trade mark infringement since BIG JACK and MEGA JACK were not deceptively similar to BIG MAC and MEGA MAC.

The judgement, written by one of Australia’s most experienced intellectual property barristers before becoming a Judge, provided a greater clarification of the requirements of ‘deceptive similarity’ under section 120(1) of the Trade Marks Act. The law around deceptive similarity includes an important High Court decision involving the original owner of CG Law’s historical Toowoomba Office, Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1959] 71 CLR 592. In that case, Justice Kitto stated that for deceptive similarity to be proven:

“there must be a real, tangible danger of its occurring… it is sufficient if the result of the use of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source”

Justice Burley also considered the very recent High Court decision, Self Care IP Holdings Pty Ltd & Anor v Allergan Australia Pty Ltd & Anor [2023] HCA 8. In that case the Court held that, when assessing deceptive similarity under s 120 of the Trade Marks Act, reputation of the registered trade mark and that of its owner is not relevant. Importantly, this means that deceptive similarity must be considered from the perspective of a hypothetical consumer who did not bring preconceptions based on their prior experience with McDonald’s or Hungry Jack’s,

“Each mark must be considered afresh, shorn of knowledge of the reputation of both. There is, of course, a degree of artificiality in the approach, but that is for the good reasons set out in the case law.”[1]

Justice Burley, considering each company’s trade marks free of surrounding branding, made a range of observations about the merely descriptive nature of the word ‘big’ and the phonetic and semantic differences between ‘Mac’ and ‘Jack’, concluding

“Allowing for imperfect recollection, 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.”[2]

His Honour found that BIG MAC and BIG JACK were not deceptively similar and reached the same conclusion in relation to the MEGA MAC and MEGA JACK marks. Accordingly, the BIG JACK and MEGA JACK marks were valid and should not be removed from the Register.

The Misleading & Deceptive Conduct Battle

Under the Australian Consumer Law (ACL), section 18 requires that a business must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

The provision has been interpreted and applied widely, but the issue before the court in this matter was quite narrow, namely, whether Hungry Jack’s representation that the Big Jack “contained 25% more Aussie beef than the Big Mac” represented to consumers that the Big Jack contained 25% more beef by cooked weight or uncooked weight. If uncooked, the representation was true, however, if a consumer would consider this referred to cooked weight, then the evidence suggested that the 25% representation would be misleading since the difference in the patties was in fact much less after cooking.

Hungry Jack’s argued that it is common practice to sell meat by reference to its uncooked weight, such as purchasing steak at a restaurant, or meat from a butcher.

However, Burley J found in favour of McDonald’s on this point, that a stronger interpretation was that the 25% bigger claim related to the cooked weight of the burger, not the uncooked weight. His Honour cited various factors, including:

• that a viewer is unlikely to pay close attention to every aspect of the advertisement, but will form a general impression of its message;
• that the advertisements showed the beef in question towards the end of its cooking time and an image of the burger ready to eat such that a consumer is likely to assume the advertisement was referring to cooked meat;
• the style of ordering from a fast food menu should be distinguished from a consumer’s consideration of an a la carte menu; and
• many of the menus in evidence, including an advertisement by McDonald’s for its Quarter Pounder, noted that the weight was pre-cooked weight.

Takeaways for Business

Trade marks must be assessed without considering any reputation in either mark, or any other surrounding branding or collateral that is used in relation to the products bearing the trade marks.

With Toowoomba’s only Registered Trade Marks Attorney and dedicated Intellectual Property Law team within a law firm, our IP team are perfectly placed to guide local businesses on how to best secure registered trade mark and other IP rights, and commercialise those rights for profit.

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[1] [94]

[2] [105]

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For further information please contact Ben Gouldson