In a decision recently handed down by Justice Burley in the Federal Court, it was held that the name ‘Big Jack’ was “recognisably different” from ‘Big Mac’, and so consumers would not be confused about which restaurant sold each burger.

As a result it was held that McDonald’s trade mark was not infringed.

What was McDonald’s claim?

Trade mark claim

McDonald’s filed a lawsuit in the Federal Court in September 2020, claiming that Hungry Jack’s ‘Big Jack’ and ‘Mega Jack’ burgers infringed its Big Mac trade mark.

The trade mark relates only to the name of the burgers name, not their appearance, and so the claim centred around whether the words ‘Big Jack’ and ‘Mega Jack’ were deceptively similar to ‘Big Mac’ and ‘Mega Mac’.

McDonald's sought an order that Hungry Jack's destroy all promotional materials using the Big Jack and Mega Jack names. They also sought damages and costs.

Misleading and deceptive conduct claim

After the lawsuit was filed, Hungry Jack’s released an advertising campaign claiming that the Big Jack was 25% larger than the Big Mac.

As a result, McDonald’s added a claim for misleading or deceptive conduct.

What did the Court find?

Trade mark claim

The Federal Court dismissed McDonald’s claim, ruling that Hungry Jack’s had not engaged in trade mark infringement.

Justice Stephen Burley importantly noted that any discussion about the appearance of the burgers was outside the scope of the case, and he was concerned only with the alleged deceptive similarity of the trade marked words.

Justice Burley found that "Big Jack is not deceptively similar to Big Mac" and so, as a consequence, “McDonald's [did] not establish that the impugned use of the Hungry Jack's trade marks infringes its registered trade marks." These findings were the same for the Mega Jack trade mark.

It was held that Hungry Jack’s had not used the name Big Jack “for the purpose of misleading consumers” but rather “to invite a comparison and contrast”.

Misleading and deceptive conduct claim

Justice Burley did however find that Hungry Jack’s had engaged in misleading or deceptive conduct, based on evidence which proved Big Jack patties fell “far short” of being 25% greater than the Big Mac patties.

The penalty imposed on Hungry Jack’s in relation to this finding will be determined at a separate liability hearing.

Lessons learnt

This case reiterates the fact that there is no intellectual property in the “lookalike” nature of food and that more is required to successfully bring a claim of this kind.

It is an example of the importance of focusing on the exact nature of the trade mark that is alleged to have been infringed – in this case the words ‘Big Jack’, and not the appearance of the burger.

But perhaps most importantly, it is a reminder of the Court’s guidance on all topics, large or small:

“… The word BIG is descriptive. A person unfamiliar with McDonald’s and any reputation residing in it would understand the word to convey something about the product promoted for sale, namely, having regard to the relevant registration, a hamburger that is large (big) as opposed to a small one. The word BIG may be regarded as both laudatory as well as descriptive, it being perhaps a good thing to have a larger hamburger. One may take judicial notice that it is a common adjective.”