“Not deceptively similar”: McDonald’s Big Mac (left) and Hungry Jack’s Big Jack (right)

McDonald’s has lost a three-year Federal Court fight against Hungry Jack’s in which it claimed the latter’s Big Jack and Mega Jack burgers infringed its Big Mac trademark.

McDonald’s argued Hungry Jack’s deliberately adopted the Big Jack and Mega Jack marks for the purpose of “promoting in the mind of consumers a connection or affiliation between Big Mac and Mega Mac hamburgers”.

However, after hearing evidence from both sides, Federal Court Justice Stephen Burley has ruled that neither burger brand was “deceptively similar” to the Big Mac.

The decision did not fall entirely in Hungry Jack’s favour, however, with the Court accepting an additional McDonald’s claim that Hungry’s Jack’s had engaged in misleading conduct by advertising in two television commercials that its Big Jack burger contained “25% more Aussie Beef”.

“An element of cheekiness”

During the court hearing Hungry Jack’s chief marketing officer Scott Baird gave evidence that he and those reporting to him in the Hungry Jack’s marketing team decided to offer a club-style sandwich – being a hamburger with an extra layer of bread to separate two hamburger patties – as a direct competitor product to McDonald’s’ Big Mac, to fill a gap in Hungry Jack’s offering.

According to extracts from his affidavit published in the court decision, in July 2019 Mr Baird instructed Andrew McCallum, Marketing Director, and Andrew Cheong, New Product Development Manager, to develop a product in a trial market which was to adopt a 5”, club-style sandwich form, being a 5” club “Big King” hamburger.

The” Big King” is a hamburger sold in Burger King outlets overseas, but not available in Australia.

Mr Baird gave evidence that the design of the Big Jack burger mirrored the Big King hamburger offered internationally, namely cheese melted on top of the patties, lettuce, pickles, sliced onions and a new sauce called “King Sauce”.

However the name Big King as used elsewhere internationally was not, as he understood it, relevant in Australia where the Hungry Jack’s brand, not Burger King, is used.

Instead, he considered that the name Jack or Jack’s would be suitable, as it would in part be a reference to the corporate branding and the name of the Hungry Jack’s founder, Jack Cowan and in part a flow-on from the chain of cafés that Hungry Jack’s had launched (attached to Hungry Jack’s restaurants) called Jack’s Cage.

In his affidavit Mr Baird said:

“I was aware that there was an element of cheekiness in naming the product Big Jack, due to the rhyming of “Jack” and “Mac” in Big Mac. I was aware that the name would likely be perceived as a deliberate taunt of McDonald’s. The use of cheeky “taunts” is common in overseas markets where McDonald’s and Burger King compete… Given the well-established level of competition between Hungry Jack’s and McDonald’s, together with the use of distinctive branding by both outlets, the separate trade channels operated by each of them, the common use of BIG and MEGA (as discussed below) together with Hungry Jack’s association with the name Jack, I did not consider there to be any risk that consumers would confuse the trade source of the Big Jack Hamburger with the source of the Big Mac Hamburger.”

While conceding the move was “cheeky”, he also contended it was not confusing: both businesses used distinctive branding, such as their logos and names; and the differences in the word marks, it argued to the court.

“Harry is not Barry”

Justice Burley noted in his decision that while there is “a similar rhyme” to the conclusion of the two marks when said aloud, there was also “a phonetic difference” between the spoken aspect of “mac” and “Jack”.

“In my view, people are likely to be attuned to noticing differences in forenames (Harry is not Barry, Pat is not Matt, Ryan is not Brian, Ronald is not Donald) and they are more likely to remember the different look and sound of the words MAC and JACK as points of distinction.’

“Taken together, these matters lead me to the conclusion that Big Jack is not deceptively similar to Big Mac”.

Incorrect Weight

McDonald’s hd also contended that Hungry Jack’s statement in advertising that its Big Jack hamburger contains 25 percent more Aussie beef than the Big Mac breached the provisions of the Australian Consumer Law.

Hungry Jack’s argued the representation was correct and that the ACL claim must be dismissed.

Drawing on the results of extensive testing by experts of burgers in more than 50 McDonald’s and Hungry Jack’s stores, the Court said the results indicated the weight of cooked beef in Big Jack burgers exceeded that in Big Mac burgers by 12-15%.

Justice Burley said the testing results demonstrated – with a very considerable margin of error – that the weight difference was significantly less than 25%, so ruled that McDonald’s succeeded in its weight difference claim.

The matter will now move onto a liability hearing, where Hungry Jack’s could be ordered to pay financial penalties for its misleading marketing campaign.