Burger King Fights Proxy War Against McDonald's Over Hungry Jack Trademark Dispute

from the shots-fired dept

As one of the largest private employers in the world, it probably shouldn’t come as too big a surprise that McDonald’s is fairly protective of its trademarks. The company, large legal coffers though it has, is not undefeatable, however. It was only a year or so ago, for instance, that McDonald’s famously lost its “Big Mac” trademark in Europe when another chain, Supermacs, got it cancelled as it expanded into more European markets.

Well, now Mcdonald’s is facing another trademark issue in Australia. Down Under, there is a fast food chain called Hungry Jack’s, which is actually a part of Burger King. Burger King, of course, is McDonald’s chief global rival. There is something of a proxy war currently being waged over Hungry Jack’s “Big Jack” sandwich, with McDonald’s crying trademark infringement over its “Big Mac” trademark.

McDonald’s Asia-Pacific filed Federal Court proceedings on August 28 against Hungry Jack’s over its rival’s new burger trademark, which it claims is “substantially identical with or deceptively similar” to its own Big Mac trademark.

Hungry Jack’s has been the owner of the registered trademark “Big Jack” since November last year but McDonald’s says the trademark “is liable to be cancelled, and should in the exercise of the court’s discretion be cancelled” on a number of grounds, including that it is “likely to deceive or cause confusion” among consumers.

So let’s stipulate immediately that the rival for McDonald’s absolutely constructed a sandwich burger that has a lot of similarities to a Big Mac. The construction of the food is similar and the names both have the word “Big” in them, and then culminate in designators for the companies selling them, but those names rhyme. Big Mac. Big Jack. You get it.

So, with all of that stipulated, is this trademark infringement? Well, as always, that comes down to the question of whether there will be public confusion as to the source of the products. And Hungry Jack’s is apparently prepared to argue that there won’t be.

In a defence filed in the Federal Court on Friday, lawyers for Hungry Jack’s said consumers were “well aware” of the “competitive rivalry between Hungry Jack’s and [McDonald’s]” and it had not infringed the latter’s trademarks. Consumers would not be deceived into thinking the Big Jack was a McDonald’s product, they said.

Hungry Jack’s said it was entitled to use the Big Jack trademark, which played on the company’s name and the name of “its founder and current owner, Jack Cowin”. The word Jack was “closely associated by consumers with Hungry Jack’s’ goods and services”, the company’s lawyers said.

Add to the above that much of the complaints McDonald’s lodges aren’t relevant in a trademark dispute. The recipe for the sandwich doesn’t really matter, unless McDonald’s has trademarked this construction. If it has done so, it certainly hasn’t said as much. The word “Big” in the name of each product basically doesn’t matter, since it is both descriptive and in common use in trademarks all over the place. Instead, this is going to come down to whether “Jack” is too similar to “Mac”, sufficiently so to lead to public confusion.

Which is where Hungry Jack’s point is made. The rivalry between these two is as famous in Australia as Burger King versus McDonald’s is in America. Given that notoriety, and the simple fact that the dispute is over two words that very specifically designate the origin of the product, it’s hard to imagine the public being confused by any of this.

In other words, it would seem that McDonald’s would need to bring instances of actual confusion to court to make this lawsuit successful.

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Companies: burger king, hungry jack, mcdonald's

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Comments on “Burger King Fights Proxy War Against McDonald's Over Hungry Jack Trademark Dispute”

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Samuel Abram (profile) says:

Is is trademark?

Maybe it’s patent, but the patents would’ve expired by now. And while a Google Image search has presented me with a Hungry Jack sandwich that looks a lot like a Big Mac, I think the fact that one is buying it in a Hungry Jack would stop the confusion; the only way someone would be confused is if they were to leave it unattended somewhere and calling a Big Jack a Big Mac, so I could see McDonald’s having a point there, but do people go to Hungry Jack (and Burger King everywhere else, for that matter) to buy McDonald’s food?

Crafty Coyote says:

But would Burger King object if Ronald McDonald started sneaking around and even surprising people in bed by bringing them burgers. After seeing a guy in a king costume giving out burgers a decade and a half ago, would Americans like the idea of a clown who goes around and gives out barely edible food to people?

Maybe that’s a trademark enforcement we would all want

Pseudonym says:

For an indication about how this might go, there was a previous case between rival chocolatiers Cadbury and Darrell Lea over the colour purple. <a href="https://www.theage.com.au/national/cadbury-loses-purple-case-20060428-ge27nq.html“>Cadbury does not own the colour purple and does not have an exclusive reputation in purple in connection with chocolate.</a>

But, of course, the case is most famous for how it dealt with expert testimony. Cadbury wanted to introduce an expert witness, Brian Gibbs, to testify on consumer behaviour. Justice Heerey ruled that this was inadmissable because Gibbs was not going to say anything that an ordinary person wasn’t familiar with. Specifically, and I quote, "Judges buy chocolate too."

This comment has been flagged by the community. Click here to show it.

Anonymous Coward says:

Instead, this is going to come down to whether "Jack" is too similar to "Mac", sufficiently so to lead to public confusion.

Shame. I was going to make a joke a fight over a hypothetical "Big Richard", that someone was going to come out swinging. But that doesn’t rhyme at all. Instead, it all boils down to an "ack".

Spyder says:

The appearance of the burger looks like it won’t come into play based on the comments from the judge. It’s just going to come down to the similarity between "Mac" and Jack" in the trademark.

HJs have started showing ads on TV about the lawsuit, trying to generate more publicity for their burger. https://www.youtube.com/watch?v=ImDLNYockxE

To see what the burgers look like compared to one another – similar but different.

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