Insights / September 18th, 2020

Big Mac vs Big Jack – a big reminder to protect your trade marks

Whether you know it as Burger King or Hungry Jack’s, this global fast food business’ current public feud in Australia with international fast food retailer competitor McDonalds has provided another reminder of the importance to register, protect and monitor your trade marks.

Hungry Jack’s is not new to trade mark issues. Burger King was unable to use the “Burger King” name when it was introducing its fast food chain into Australia due to an existing trade mark in Australia. Instead, the fast food retailer entered into Australia under the “Hungry Jack’s” branding.

While McDonalds’ Big Mac hamburger has been on the market since 1973, Hungry Jack’s Big Jack burger only launched in July of this year. The two burgers strike an uncanny resemblance from the similarity of their ingredients to, notably, their names. In court filings lodged on 28 August 2020, McDonald’s alleges that Hungry Jack’s use of the Big Jack trade mark is likely to deceive consumers and cause confusion as it is substantially identical with or deceptively similar to McDonald’s Big Mac trade mark.

The interesting part about the proceedings is that BIG JACK is a registered trade mark in Australia. The Big Jack trade mark application was uncontested on lodgement in November 2019 and was successfully registered in June 2020, just prior to the commencement of the marketing campaign. The application was successful despite McDonald’s existing BIG MAC trade mark.

No doubt loyal customers of each fast food chain will have their opinion as to the flavour of each respective burger, and any similarity thereof, but that is not the relevant point for the court proceedings. While McDonald’s had the opportunity to oppose Hungry Jack’s Big Jack trade mark application whilst it was advertised for a two month period (as part of the trade mark application process) it did not lodge any opposition at that time. After the Big Jack campaign launched, McDonald’s was then only left with the option to take court action. Central to McDonald’s action is the accusation that Hungry Jack’s lodged and registered their trade mark in bad faith considering the reputation of the existing Big Mac trade mark.

Key takeaways

This fast food feud serves as a key reminder to each business, whether national or international, to register, protect and monitor your trade mark in the relevant jurisdictions. McDonald’s trade mark was already in place; however, this did not automatically prevent a new trade mark being registered that could confuse consumers. It is crucial to remember that holding a trade mark is not a ‘set and forget’ activity. To protect its brand, and proactively prevent these situations, a business must continually use its trade mark and monitor new applications.

Cowell Clarke provides assistance to clients in protecting their trade marks at all stages of the process. We can assist with applying for a new trade mark and monitor new applications to identity any new similar applications. If we identify similar trade mark applications which may impact a brand, we have a strong intellectual property dispute team who is well versed in dealing with trade mark disputes.

If you have any queries regarding trade mark registration and protection in Australia, please contact a member of our team – Contact Us.

This publication has been prepared for general guidance on matters of interest only and does not constitute professional legal advice. You should not act upon the information contained in this publication without obtaining specific professional legal advice. No representation or warranty (express or implied) is given as to the accuracy or completeness of the information contained in this publication and to the extent permitted by law, Cowell Clarke does not accept or assume any liability, responsibility or duty of care for any consequences of you or anyone else acting or refraining to act in relation on the information contained in this publication or for any decision based on it.

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