Anyone for a Big Jack?

Thursday 29 October, 2020

Many New Zealanders have heard of Hungry Jack’s, an Australian fast food franchise owned by the Burger King Corporation. The menu on offer is similar to Burger King in New Zealand, but Hungry Jack’s recently started offering two new burgers: a ‘Big Jack’ and a ‘Mega Jack’. Perhaps unsurprisingly, this caught the attention of McDonald’s, who claimed that this infringed on its ‘Big Mac’ trade mark.

Hungry Jack’s took the sensible step of trade marking its ‘Big Jack’ burger name before launching it and is in the process of registering a trade mark for the ‘Mega Jack’ as well. However, McDonald’s has challenged the ‘Big Jack’ trade mark on the grounds that is it substantially identical or deceptively similar to its ‘Big Mac’ trade mark and will therefore confuse or deceive burger buyers. The Australian Federal Court now has to decide whether to revoke Hungry Jack’s ‘Big Jack’ trade mark, so that it is prevented from using it.

Hungry Jack’s is opposing McDonald’s application for revocation on the grounds that the burgers have different sizes, tastes, packaging and presentation, so there is little risk of confusion. The fact that the ‘Big Mac’ is so well known in Australia may even count against McDonald’s, as it reduces the chances that customers could confuse the two burgers. If Hungry Jack’s is successful, this will be the second time that a ‘Big Mac’ case has gone against McDonald’s. In early 2019, McDonald’s lost the right to the ‘Big Mac’ trade mark in the European Union on the basis that it hadn’t actually been using the trade mark.

Could McDonald’s have avoided this trade mark battle?

Instead of waiting until after Hungry Jack’s had registered and launched the ‘Big Jack’, McDonald’s could have opposed the registration of the ‘Big Jack’ trade mark when it was first filed, and prevented registration of the trade mark in the first place. Opposing registration of a trade mark is simpler and easier than trying to have it revoked once it’s already being used. It is important to act early to protect trade marks and prevent registration of trade marks that may infringe yours, as your intellectual property is one of your business’s most valuable assets.

Our IP experts can help you prepare a strategy for protecting your intellectual property, get in touch below.