On Thursday 16 November 2023, the Federal Court handed down the decision McD Asia Pacific LLC v Hungry Jack’s Pty Ltd [2023] FCA 1412 (McD) where it was held the trade mark ‘BIG JACK’ and ‘MEGA JACK’ were not deceptively similar to McDonald’s registered trade marks ‘BIG MAC’ and ‘MEGA MAC’.

Trade mark infringement case

The applicant McD Asia Pacific LLC and McDonald’s Australia Limited (together, McDonald’s) is the owner of Australian trade mark numbers 271329 and 271330 for ‘BIG MAC’ in respect of a number of goods, but most importantly in relation to meat and hamburgers. McDonald’s also owns Australian trade mark number 1539657 for ‘MEGA MAC’ in respect of edible sandwiches and meat sandwiches.

The respondent Hungry Jack’s Pty Ltd (Hungry Jacks) did not dispute that it had used the words ‘Big Jack’ and ‘Mega Jack’ as trade marks in respect of meat, hamburgers or meat sandwiches. However, it did argue that these trade marks were not deceptively similar.

In finding the marks were not deceptively similar and therefore not an infringement, Justice Burley followed the recent High Court decision in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8; (2023) 408 ALR 195 (Self Care). Importantly, the following principles from Self Care were articulated:

reputation based on actual use of the registered trade mark should not be taken into account when assessing deceptive similarity, and the notional buyer should not be attributed with knowledge of any use by the owner. This is because it is registration not use that conveys monopoly rights to a trade mark; and
other circumstances outside of comparing the two trade marks (e.g. whether there are other aspects of the packaging which might counter trade mark infringement) are not relevant when assessing infringement.

Importantly on the second point, Justice Burley agreed with Justice Jackman’s decision in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd [2023] FCA 482, where his honour pointed out the ‘unfortunate error’ made by the High Court in Self Care where it had first set out the principle that other circumstances are not relevant when comparing two marks for deceptive similarity, but went on to consider words on the back of the impugned mark’s packaging as a relevant consideration.

Justice Burley affirmed the comparison is only between the notional use of the registered mark against the actual use of the alleged infringing mark and that other circumstances around the actual use are not to be considered.

Applying the above principles, Justice Burley found:

the word ‘BIG’ and ‘MEGA’ conveyed a descriptive meaning, in the sense that the words indicated the product sold was larger in size and, accordingly, consumers are less likely to consider these words as a point of distinction;
consumers are likely to note several similarities: both contain two short monosyllabic words, both begin with BIG, both finish with an “ack” sound; and
although both are BIG, the idea conveyed by JACK and MAC is different. The words look and sound different, the “j” being quite distinctive of “m” both visually and phonetically. Consumers are likely to be attuned to noticing differences in forenames.

Justice Burley also held Hungry Jacks did not intend to mislead consumers by adopting the ‘BIG JACK’ mark, but instead ‘invited a comparison and contrast’ between the two marks. His honour referred to a Hungry Jacks’ internal document which admitted adopting the mark was ‘cheeky’. However, the desire was to compete by a choice of name that echoed the BIG MAC name but was nonetheless recognisably different to it.

Key takeaways

The law is now settled that any reputation you may have developed in a brand is not to be taken into account if another person is using your trade mark. In McD, it was irrelevant how much reputation McDonald’s had developed in the ‘BIG MAC’ and ‘MEGA MAC’ brands.
Further, there is now further authority to confirm the any other circumstances outside of the impugned mark’s use (e.g. a disclaimer that an infringer’s mark is not associated with your mark) must not be considered when assessing deceptive similarity. The comparison is between your registered mark, and the mark used by the alleged infringer.

Obtaining and enforcing the registration of a trade mark is vital for maintaining the integrity of the goodwill subsisting in a business and its product and service brands. If you are interested in seeking or enforcing your trade mark rights for your business or your products or would like some assistance in determining whether your mark is too similar to another, please contact our specialist Intellectual Property Team.

Michelle Dowdle
Principal Lawyer
T +61 3 9611 0114 | M +61 408 674 256
E: mdowdle@sladen.com.au

Thomas Howell
Lawyer
T +61 3 5226 8526
E: thowell@sladen.com.au