Battle of the Burgers
23 Sep 2020
- Business Law
- Intellectual Property
McDonald’s and Hungry Jacks have long battled to win over the hearts, minds and stomachs of Australians. Now, a rivalry between two fast good giants takes on a new stage.
In August 2020 McDonald’s Asia Pacific (McDonald’s) commenced legal action against Hungry Jack’s in the Federal Court of Australia. The reason? It claims that Hungry Jack’s new burger range – the “Big Jack” and “Mega Jack” infringe on McDonald’s intellectual property rights with respect to its own burgers – the “Big Mac” and the “Mega Mac”.
McDonald’s has owned the Big Mac trademark since 1973 and Mega Mac mark since 2013.
The governing legislation is the Trade Marks Act 1995 (Cth) (‘the Act’). McDonald’s claims that Hungry Jack’s registration of the Big Jack and Mega Jack should be rejected (as ordered by the Court) because registration of those marks breaches the following sections of the Act:
- Section 43 (trade mark likely to deceive or cause confusion): Hungry Jack’s marks are deceptively similar to McDonald’s marks and are “likely to deceive or cause confusion”.
- Section 44 (identical trade marks): Hungry Jack’s trademarks are substantially identical with or deceptively similar to McDonald’s marks (and McDonald’s registered its marks first).
- Section 60 (trade mark similar to a mark that has acquired reputation): McDonald’s registered its marks earlier and have now “acquired a reputation in Australia” and because of that reputation Hungry Jack’s marks are “likely to deceive or cause confusion”.
What is deception/ confusion?
The common element of the above claims is that registration of Hungry Jack’s marks is likely to deceive or cause confusion for consumers.
The Federal Court must answer this question: is a consumer likely to be confused by the different trademarks. In other words, is a consumer likely to be confused into thinking there is a connection between the Big Jack and Big Mac burgers.
The decision of the Federal Court will capture national interest given the players involved. However, it will serve as another important precedent on the legal issue of trademark infringement, and in particular, the meaning of deceptively similar.
Is my IP being infringed?
If you think your intellectual property rights have been infringed, or you have not taken any steps to protect your intellectual property, contact our Business Services team on 02 6285 8000 or by email.