Intellectual Property Update

In 2020 McDonalds filed proceedings in the Federal Court alleging Hungry Jacks’ “Big Jack” infringed the McDonalds registered trademark “Big Mac”.  In a judgment of Burley J that begins with the statement “This is a dispute about trade marks, misleading or deceptive conduct and hamburgers” Burley J dismissed McDonald’s trade mark infringement claim.

Section 120 of the Trade Marks Act provides:

1. A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.
2. A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:
   • goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered; or
   • services that are closely related to registered goods; or
   • services of the same description as that of services (registered services) in respect of which the trade mark is registered; or
   • goods that are closely related to registered services.

However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.

McDonald’s argued that Hungry Jacks deliberately used “Big Jack” with the purpose of promoting, in the mind of the public, a connection or affiliation between the “Big Mac” hamburger and the “Big Jack”.

Hungry Jacks Chief Marketing Officer gave evidence “that he was aware of an element of cheekiness in naming the product “Big Jack” due to the rhyming of the respective burger names” but that given the distinctive branding of each brand, Hungry Jacks’ association with the name Jack and the separate trade channels for each,  he did not consider there to be any risk that consumers would confuse the trade source of the “Big Jack’ with the source of the “Big Mac”.

Burley J agreed with Hungry Jacks, concluding that it was unlikely that the typical consumer would confuse “Jack” with “Mac” or “be caused to wonder whether hamburger products sold under and by reference to Big Jack come from the same source or are affiliated with the trader who sells the BIG MAC”.   On the issue of whether “Big Jack” was ‘deceptively similar’, as required by section 120, Burley J relied upon the High Court approach in Self Care IP Holdings Pty Ltd v Allergen Australia Pty Ltd [2023] HCA 8 in which the High Court concluded that in deciding the issue, regard is not had to any reputation of the subject trade mark, rather, the ‘similarity’  must be considered by having regard to the hypothetical consumer without any knowledge of the history or reputation of the relevant brand in issue.   After considering the words of the “Big Mac” trademark, Burley J rejected the argument that the use of “Big Jack” was deceptively similar.  His Honour considered the word “Big” was merely descriptive of the size of the product and in relation to the words “Mac” and “Jack” that a typical consumer would be unlikely to confuse these words.   In relation to confusion, His Honour noted, McDonald’s failed to provide any evidence of actual confusion, and whilst not an essential element required to establish infringement, in this instance, given the simple words in issue, this lack of evidence weighed against the argument of McDonald’s.

In relation to the “cheekiness” of the conduct admitted by the Chief Marketing Office of Hungry Jacks, His Honour agreed the conduct may have been cheeky, however was not satisfied that this approach adopted by Hungry Jacks was done with the intention to deliberately deceive consumers.

The decision demonstrates the strict approach adopted in circumstances of alleged infringement of at trademark that consists merely of words.

Canterella Pty Ltd (Vittoria coffee) have been for many years engaged in protracted litigation with another well known brand, Lavazza, in relation to the use of the word “Oro” on products.   Whilst ultimately the Court cancelled the Cantarella “Oro” trademarks due to issues with establishing ownership, Yates J found that Lavazza would have infringed the Oro trademarks.

The Oro Marks were registered by Cantarella in 2000 and 2013.

Cantarella claimed that the Lavazza packaging referencing the word Oro infringed the Oro Marks.

Despite submissions by Lavazza that use of “Oro” was not as a trade mark, Yates J concluded that “Oro”, as depicted on the Lavazza packaging, did amount to use of the words as a trade mark given the dominant use and placement of the word on Lavazza packaging, and that the word was used on its own, and not as part of a composite mark.

Whilst the Court found there was an infringement, Lavazza successfully persuaded the Court that the Canterella trade marks of “Oro” should be cancelled.  Whilst the cancellation argument was lengthy and complex, of interest is the argument by Lavazza that the “Oro” trade marks were not capable of distinguishing the Vittoria products from other coffee products.  This argument required the Court to consider the word “Oro” in its general meaning.  Lavazza pointed to the common use of the word “Oro” and “d’oro” in relation to coffee products.  Lavazza argued that much of the Australian consumer market would know the word “oro” as meaning “gold” and in turn “premium quality”.  Lavazza argued that the word would be understood by consumers as no more than descriptive of quality coffee.

Yates J was not persuaded by the argument of Lavazza noting that the question to be considered was whether the Italian word “oro” had an “ordinary signification”, that is a commonly understood and shared meaning by ordinary consumers.  His Honour was not satisfied that the Australian consumer public would understand “oro” to mean gold as asserted or that it was an indication of a premium product.

The approach of the Court on the question of ‘general meaning’ or ‘commonality’ is a reminder that an argument that a large number of consumers may understand the meaning of word, or that is well known in a particular industry, is not of itself determinative or sufficient in response to an argument against alleged infringement.  The approach to be adopted is whether ordinary members of the Australian consumer market understand the subject word to have the meaning being relied upon.

SWS regularly advises clients in relation to intellectual property matters including both IP protection and issues of potential infringement.  Should you require any assistance in relation to intellectual property matters contact Susan Moran, Principal or Emma Sheen, Senior Associate.

This article is not legal advice.  It is intended to provide commentary and general information only.  Access to this article does not entitle you to rely on it as legal advice.  You should obtain formal legal advice specific to your own situation.  Please contact us if you require advice on matters covered by this article.