The battle of the burgers is over after McDonald’s lost a three-year trademark fight with Hungry Jack’s over names.
The Federal Court yesterday ruled Hungry Jack’s had not infringed on the McDonald’s registered trademarks Big Mac and Mega Mac through its use of the labels Big Jack and Mega Jack, but that it had misled consumers over its related “25% more Aussie beef” claim.
McDonald’s started proceedings against Hungry Jack’s in 2020 over its use of the labels, which it argued breached Section 120 of the Trade Marks Act 1995 (Cth).
It further contended an order should be made for its rival’s Big Jack trade mark to be removed from the Trade Marks Registry.
It also argued Hungry Jack’s had breached Section 18 of the Australian Consumer Law (ACL) by claiming that its Big Jack contained 25 per cent more beef than a Big Mac.
In his 61-page decision, Justice Burley ruled the burger names used by Hungry Jack’s were not deceptively similar to those of McDonald’s, and so did not infringe the registered trademarks.
McDonald’s argued Hungry Jack’s “deliberately adopted the impugned trade marks for the purpose of appropriating McDonald’s reputation”, and there was a “real, tangible danger of confusion” among consumers.
“McDonald’s submits that the evidence establishes that Hungry Jack’s deliberately chose a visually and phonetically similar trade mark, Big Jack, in respect of a ‘copycat’ product which directly competes with its Big Mac hamburger,” Justice Burley said.
“It submits that this evinces an intention to adopt a significant part of the Big Mac trade mark to take advantage of the similarity in the minds of consumers.
“Hungry Jack’s disputes that the marks are visually and aurally similar and contends that aural similarities are less important in the present case, where goods are bought in a manner that relies on predominantly visual cues, whether in takeaway restaurants or online.
“It submits that the ideas of the marks differ, with Big being a classically descriptive word which is common to the trade and is accordingly to be afforded less weight.”
Justice Burley found consistent use of Hungry Jack’s branding would not confuse consumers, and the introduction of the Big Jack was to encourage consumers directly to compare it with the Big Mac, not to confuse them as to the origin of the Big Jack burger.
He considered factors such as consumer familiarity with the names Jack and Mac, as well as the look and sound of the names, and the ideas they conveyed.
He said Hungry Jack’s admitted to cheekiness in choosing the burger names but did not fashion them for the purpose of misleading consumers.
He used a similar reasoning to conclude Mega Jack was not deceptively similar to Mega Mac.
In relation to the ACL claim, Hungry Jack’s submitted the “25% more Aussie beef” representation referred to uncooked weight, and that the practice in the food industry was to refer to the raw weight of meat.
McDonald’s argued consumers would readily assume from the TV advertising that the comparison was between final, ready-to-eat burgers.
“I do not think that the consumer will pay much regard to the distinction between cooked and pre-cooked weight. To the extent that they do, many are likely to form an impression that it is cooked weight,” Justice Burley said.
“That impression is supported by the images of the patties being at an advanced stage of cooking, and the concluding image of a ready to eat hamburger meal.”
Evidence from McDonald’s included a report from an analytical chemist who tested more than 100 Big Jack and 100 Big Mac burgers bought from Brisbane and Melbourne outlets. Her results showed a difference in meat weight of between 12.5 and 15.2 per cent.
Hungry Jack’s criticisms of this evidence included that removal of the cheese and condiments “had violated the integrity of the hamburgers such that it was neither a cooked Big Jack nor a cooked Big Mac hamburger patty that was being weighed”; that the patties were not weighed immediately after purchase; and that no account had been made for moisture loss from the patties to the bun or through heat dissipation.
“I do not consider that any of these criticisms are likely to have a material bearing on the results recorded, which indicate that the cooked weight of the respective patties demonstrates that the weight of the meat in the Big Jack is far short of being 25% greater than the meat in the Big Mac,” Justice Burley said.
Hungry Jack’s was unsuccessful in its cross-claim for the removal of the Mega Mac trademark from the register.
McDonald’s was unsuccessful in its bid for cancellation of the Big Jack trademark.
Justice Burley ordered that the parties confer and provide an order giving effect to his reasons.
The issues of damages and penalties will be heard at a later date.