INSIGHT

Burger rivals in dispute with the lot

By Edward Thien
Intellectual Property Media, Advertising & Marketing Patents & Trade Marks

In brief 3 min read

McDonald's has sued Hungry Jack's in an effort to have the latter's trade mark, Big Jack, cancelled based on various grounds.

McDonald's alleges the Big Jack trade mark will cause confusion among customers and was registered in bad faith in light of McDonald's existing Big Mac trade mark.

Regardless of the outcome, the case is a timely reminder to use caution when employing comparative advertising against competitors. 

How does it affect you?

McDonald's claim to cancel Hungry Jack's trade mark registration for bad faith is particularly interesting. This dispute highlights the boundary between clever trade marks and conduct that would deceive or confuse consumers.

Who in your organisation needs to know about this?

The developments in this case will be relevant to anyone in your organisation seeking to register trade marks that may result in infringement or similar proceedings being brought.

Background

Hungry Jack's recently started selling and advertising a new burger, the 'Big Jack', the name of which is a registered trade mark of Hungry Jack's. McDonald's sells its iconic burger under the trade mark 'Big Mac'. As well as alleging that the Big Jack trade mark is 'substantially identical with or deceptively similar' to Big Mac, McDonald's also claims Hungry Jack's registration was made in bad faith. McDonald's has filed Federal Court proceedings accordingly.

Hungry Jack's has also applied to register the trade mark 'Mega Jack' which McDonald's is opposing based on its 'Mega Mac' trade mark registration. The parties have appeared in a preliminary hearing before Justice Burley and are scheduled to return to court again at a later date. McDonald's is seeking damages, interests and costs, as well as orders for Hungry Jack's to destroy all promotional material using the relevant marks.

Grounds for court to cancel a trade mark registration

Upon application by an aggrieved person, the court has various powers to cancel the registration of a trade mark. The grounds for such a cancellation include any of the grounds on which the registration of a trade mark could have been opposed under the Trade Marks Act 1995 (Cth), including that the application was made in bad faith. The court could also cancel a registration where the use of the trade mark is likely to 'deceive or cause confusion' among consumers.

Arguments of parties

Hungry Jack's has denied that consumers would be deceived into thinking the Big Jack was a McDonald's product given the well-known rivalry between the two burger chains. Hungry Jack's has also run television advertisements mentioning the lawsuit and claiming that consumers would not be misled as the 'Big Jack' is a better burger in various ways, including size and taste.

McDonald's claims that Hungry Jack's has intentionally caused the 'Big Jack' to resemble the 'Big Mac' by using similar ingredients, including a middle bread layer. However, such similarities are separate to the trade mark issue as the shape of McDonald's burger is not a registered trade mark. Further, Hungry Jack's has submitted that no intellectual property of any form exists in the 'Big Mac' burger's appearance.

McDonald's has not alleged passing off in relation to Hungry Jack's conduct. Such a claim would not likely be successful as McDonald's would have a difficult time establishing customers would likely be deceived into thinking a Big Jack burger sold at Hungry Jack's was a McDonald's product. Therefore, the focus of this case will be on the similarities between the trade marks themselves.

Other burger cases

This is not the first burger-related trade mark case brought before the courts in recent years. A Sydney burger chain selling burgers under the name 'Down N' Out' was forced to remove signs, packaging and promotional material after a claim was brought by US burger company, In-N-Out Burger. The Sydney company's claims were not helped by its advertising campaign that alluded to its US rival.

Actions you can take now

Take caution in the manner in which comparative advertising against competitors is run as this may attract intellectual property infringement claims and will further affect a court's decision on what steps need to be taken to correct any confusion that is found among consumers.