In a pickle over burgers, McDonald’s Asia Pacific has issued legal proceedings in the Federal Court against Hungry Jack’s seeking, inter alia, injunctive relief.
McDonalds allege that by using the burger names of “Big Jack” and “Mega Jack”, Australian burger franchisee Hungry Jack’s have damaged the intellectual property of McDonald’s burgers “Big Mac” and “Mega Mac”.
They also allege that Hungry Jack’s “deliberately adopted or imitated” the “distinctive appearance or build” of the Big Mac and acted in “bad faith” when they applied for their own trade mark of the Big Jack in November 2019. The contention is that Hungry Jack’s was well aware of the trade marks that McDonald’s has held since the early 1970s.
The McDonald’s ingredients and their advertising tagline of “two all-beef patties, special sauce, lettuce, cheese, pickles, onions – on a sesame seed bun”, is on the chopping block as well. Hungry Jack’s online advertising campaign describes the Big Jack burger as “Two flame-grilled 100% Aussie beef patties, topped with melted cheese, special sauce, fresh lettuce, pickles and onions on a toasted sesame seed bun”.
McDonalds is seeking an order from the Court cancelling the trade marks granted to Hungry Jack’s in 2019, and the destruction of all promotional materials related to the Big Jack and Mega Jack.
This is not the first time McDonalds have sought to protect its intellectual property. Brisbane-based Burger Urge received a ‘cease and desist’ letter when they launched their ‘Big Pac’ burger in 2018. Managing director Sean Carthew was quoted as saying they were “a bit perplexed by it all” because at the time, Burger Urge was the only restaurant in Australia that served up Alpaca meat in their burgers.
In early 2019, McDonald’s lost its EU trade mark for the Big Mac after a battle with Irish fast-food chain Supermac’s. Owner Pat McDonagh established the chain in 1978, and dubbed it Supermac’s after the nickname he’d been given when he played Gaelic football. They faced opposition from McDonald’s over the naming of their products, including a burger called the ‘Mighty Mac’ which shared similar ingredients to a Big Mac. McDonald’s argued that a similarity in products names might confuse customers. Supermac’s hit back with a counter-argument that McDonald’s were trying to prevent the chain from expanding outside of Ireland.
The EU Intellectual Property Office agreed with Supermac’s. They ruled that in the 5 years prior to the case being lodged in 2017, McDonald’s hadn’t proved “genuine use” of the Big Mac trademark. The ruling left the Big Mac name up-for-grabs for other companies to use.
In response to McDonald’s claims, Hungry Jack’s has let fly with an advertisement explaining why “the burgers are better at Hungry Jack’s”.
The commercial states: “They reckon Aussies are confusing the Big Jack with some American burger.
“But the Big Jack is clearly bigger with 25 per cent more Aussie beef, flame grilled with a barbecue taste.”
A spokesperson for the restaurant added: “Aussies know you can’t get smaller pan-fried American burgers at our restaurants. We flame grill our beef and that’s why the burgers are better at Hungry Jack’s.”
Hungry Jack's filed a notice of address for service of legal documents on 2 September 2020, according to The Federal Court online court file.
We’ll watch this story unwrap – with relish.
Questions? Contact Mark Da Silva, Principal Lawyer