In
This is one of the first major decisions to apply and interpret the
Background
The key issues before the Federal Court were:
- whether BIG JACK and MEGA JACK were deceptively similar to BIG MAC and MEGA MAC respectively within the meaning of s 120 of the Trade Marks Act 1995 (Cth) ("TMA");
- whether BIG JACK should be cancelled under s 44 (substantially identical or deceptively similar) and/or s 60 (similar to a trade mark that has acquired a reputation in
Australia ) of the TMA; - whether
Hungry Jack's' "25% More Aussie Beef" representation constituted breach of s 18 (misleading or deceptive conduct) of the ACL.
Trade Mark Infringement
Central to the infringement claim was whether
A deceptive similarity enquiry must take into account the notional buyer's imperfect recollection of the registered mark and ask whether there is "a real, tangible danger of deception or confusion occurring" as to trade source.3 Importantly, the Federal Court confirmed, following Self Care, that reputation based on actual use of the registered mark is irrelevant to assessing deceptive similarity under s 120(1) of the TMA.4 Accordingly, contrary to
Applying the above principles,
The following factors were of particular significance:
-
As BIG is a descriptive and laudatory word that is commonly used, the notional buyer will more likely call to MAC and JACK as points of distinction.
- Despite the similar rhyme ("ack") at the end of the two words, MAC and JACK are visually and aurally different.
- MAC is an unusual name or abbreviation while JACK is a popular forename. The notional consumer will more likely remember their differences, as people are generally attuned to noticing differences in forenames (e.g. Harry is not Barry, and Ronald is not Donald).
- The notional consumers are also likely to pay reasonable attention to a mark that denotes what food they will be eating.
- Furthermore, the intention of
Hungry Jack's was an important factor in determining whether there was a reasonable probability of deception or confusion. While evidence fromHungry Jack's' Chief Marketing Officer admitted to a degree of "cheekiness" in the Big Jack name,Justice Burley ultimately accepted that it was fashioned for the purpose of encouraging comparison, as opposed to confusing consumers as to trade origin. - Instead, audiences are more likely form a general impression of the message, which is, that they will be eating 25% more Aussie beef than when they eat the competitor's burger.
- To the extent that audiences do make a distinction between cooked and pre-cooked meat patties, they are more likely to perceive the comparison as being of the cooked meat patties. This is supported by the fact that the commercials depicted the meat patties as being in an advanced stage of cooking, and featured an image of a ready-to-eat burger meal.
- While the Federal Court acknowledged "a degree of artificiality in the [Self Care] approach",7 it is now definitive that reputation of the trade marks or any other aspects of packaging or branding (however sizeable) are irrelevant to the assessment of deceptive similarity in an infringement analysis.
- Caution needs to be exercised when making a comparative advertising claim. In addition to ensuring the representation is accurate and supported by reliable evidence, traders should also consider how the claim might be perceived from the perspective of the audience.
The Validity Challenge to BIG JACK
As
Accordingly,
The ACL Claim - "25% More Aussie Beef"
While
The following factors were particularly decisive in the finding of breach:
-
Audiences will unlikely pay attention to the distinction between cooked and pre-cooked weights.
Key Takeaways
Footnotes
1 (2023)
2
3 McD Asia Pacific, 35-36.
4 Ibid 39.
5 Ibid 94.
6 Ibid 147.
7 Ibid 94.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
Mr
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