I call it the ‘Big Mac’
Posted on September 24, 2020
In the late 1970’s, McWilliam’s Wines launched wine in a 2-litre bottle. Their advert quoted a wine writer saying ‘I call it the “Big Mac”’. Fast food chain McDonalds sued McWilliam’s for misleading and deceptive conduct, in breach of the Australian Consumer Law.
Four decades later, McDonalds is suing Hungry Jacks, which has launched the ‘Big Jack’ burger. Hungry Jacks has also registered BIG JACK as a trade mark, and McDonalds is applying to revoke that trade mark registration.
It gets worse for McDonalds. Hungry Jacks has subsequently commented:
‘Someone’s suing Hungry Jacks. They reckon Aussies are confusing the Big Jack with some American burger. But the Big Jack is clearly bigger.’
Adding spice to the mix is that Hungry Jacks describe their product as ‘2 flame grilled 100% Aussie beef patties, topped with melted cheese, special sauce, fresh lettuce, pickles and onions on a toasted sesame seed bun’ echoing McDonalds' description of the Big Mac as being ‘2 100% Aussie beef patties,… crisp iceberg lettuce, melting signature cheese, onion and pickles, between a toasted sesame seed bun…’
The legal test here is not so much whether consumers would think that a ‘Big Jack’ was in fact a ‘Big Mac’. Rather, is there a risk that a significant number of the public would think that Hungry Jacks has a sponsorship, approval, or affiliation that it does not have (or, more to the point, that the Big Jack does)? Presumably, the regular clientele of Hungry Jacks and McDonalds respectively would be under no illusions as to who’s who in the zoo, or which product is which. And most consumers would be familiar with competitors ‘poking fun’ or ‘having a go’ at each other. There may be some initial confusion, but legally this is not enough: for McDonalds to win, consumers must be misled or deceived (or there must be a real likelihood of them being misled or deceived).
The matter is now on the docket of Justice Stephen Burley of the Federal Court in Sydney.
How did McDonalds fare against McWilliam’s Wines in 1980, you may ask? They lost. The Full Federal Court thought that McWilliam's use of BIG MAC might cause confusion, but that did not amount to misleading or deceptive conduct.
The test here is a consumer test. What would ‘punters’ in the street think? Sometimes a Court will take into account a marketing expert's opinion, but ultimately it’s up to the Judge.
Misleading conduct, false representations and potential liability under the Australian Consumer Law are difficult and technical subjects. If you have a similar issue, or would like some advice, please contact the Intellectual Property team at Lynch Meyer Lawyers.