Two all beef patties, special sauce, lettuce, cheese, pickles, onions on a sesame seed bun – it’s a …
As you have no doubt heard, late last month McDonald’s Asia Pacific sued Hungry Jacks following the launch in July of the “Big Jack”.[1]
Michaela Whitbourn at the Channel 9 paper has a clean slide over comparison or you can get messy fingers here (your choice whether you skip the ads or not).
Mr Too Aussie’s video suggests the Big Jack is a special or limited time offer. However, Hungry Jack’s did file for and has obtained registration for “Big Jack” as a trade mark, No 2050899, for hamburgers etc. in classes 29 and 30, way back in November 2019. And Ben Butler at The Guardian reports McDonalds is also seeking revocation of that registration on the grounds the application was made in bad faith.[2]
After news of the court proceeding broke, Hungry Jack’s doubled down:
Someone’s suing Hungry Jack’s. They reckon Aussies are confusing the Big Jack with some American burger. But the Big Jack is clearly bigger ….
Hmmm. Earlier this year, Katzman J, in another case about burgers, explained:
What is the line between inspiration and appropriation? That is the question at the heart of the dispute in the present case.
That case didn’t turn out so well for the emulators.
As you will appreciate, McDonald’s have to get TM No. 2050899 cancelled in light of s 122(1)(e). Presumably, in addition to the “bad faith” allegation, McDonald’s is also asserting s 44 and s 60.
These provisions, like s 120, raise the question whether Big Jack is substantially identical with, or deceptively similar to, Big Mac.
You might think, even on the expanded and controversial test for “substantial identity” declared in Pham Global, the side by side comparison doesn’t work out in McDonald’s favour. Mac and Jack look and sound different and, you might think, convey rather different ideas.
What about deceptive similarity tested on the basis of imperfect recollection?
There couldn’t be too many Australians, especially of the fast food consuming public, who wouldn’t appreciate that Big Jack is gunning for Big Mac. But, is there a real and appreciable risk that a significant number of them would be caused at least to wonder whether there was some association with McDonald’s?[3]
Also, you would have to think, all those ordinary Australians would know you can only get a Big Mac in a McDonald’s outlet.
You would probably have to think they pretty much know Hungry Jack’s is a direct competitor, which makes a point of being critical of McDonald’s.[4]
Similarly, pretty much all those ordinary Australians winding up in a Hungry Jack’s take away could hardly be under any illusions that they were in Big Mac land?
Now, at 50(iii), French J did wholly orthodoxly say:
In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
Does being in the shop count? Or is that violating the rule that you compare only the allegedly infringing trade mark to the registered trade mark?
What about billboards and the like? No shop context, probably a Hungry Jack’s logo – maybe not.
Also, you might think that “Big Mac” gets into the Woolworths territory of a household name and there could have lots of fun re-running the fight between Woolworths and Henschke.[5]
What do you think?
Would things be any different if we had an anti-dilution law?
Maybe, at 50c to almost $1 more, the Big Jack will turn out to be a commercial flop and Hungry Jack’s will give up. I guess we’ll have to wait and see.
Lid dip: Jasper Kwok
- And, by way of fig leaf, Hungry Jack’s also introduced a “Mega Jack”. NSD967/2020 – First case management hearing before Justice Burley on 2 October. ?
- Shades of “merit” and “nerit”, but note the interesting approach in OHIM rejecting Banksy’s – or those representing him – attempt to “trade mark” one of his, er, graffiti. ?
- See Registrar of Trade Marks v Woolworths at [50] per French J. ?
- Just exactly whose burgers are Hungry Jack’s supposed to be better than? ?
- Most recently addressed in the AMG case at [36] – [42]: The more famous your trade mark, the less likely people will recall it imperfectly. ?
