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Griffith Hack trade mark specialists are serving up their thoughts on recent food and beverage trade mark disputes. 

Mac Attack on Big Jack

The Big Jack: “Two flame-grilled 100% Aussie beef patties, topped with melted cheese, special sauce, fresh lettuce, pickles and onions on a toasted sesame seed bun”. Sound familiar?

You may have heard McDonalds is suing its rival, Hungry Jacks (the Australian adaption and franchisee of Burger King), in the Federal Court of Australia for trade mark infringement following the launch of Hungry Jacks’ Big Jack and Mega Jack burgers in July 2020. McDonalds claims that Hungry Jacks ‘imitated’ the Big Mac’s ‘distinctive appearance’, including the ingredients and tagline.

Registered in 2019, McDonalds is seeking Hungry Jacks’ BIG JACK trade mark registration be cancelled on the grounds of bad faith and because the trade mark is “likely to deceive or cause confusion”. In other words, people might assume they are eating a Big Mac, or believe the burger has a connection with McDonalds.

In September 2020, Hungry Jacks issued a statement that it was “bemused by the trade mark lawsuit filed against it in the Federal Court… Big Jack is a registered trademark of Hungry Jack’s and it is clearly evident that customers are not confused or misled that the Big Jack and Mega Jack burgers are only available at Hungry Jack’s”. The statement included Hungry Jacks’ marketing tagline - “The burgers are better at Hungry Jack’s.”

Adding further fuel to the flame-grilled debate, Hungry Jack’s new TV ad campaign includes a voiceover for the new Big Jack burger stating “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.”

The jury’s still out on this one.

Down N' Out, Out for the Count 

The Federal Court of Australia has found that the Sydney burger business “Down N’ Out” has passed itself off as the well-known American cult burger chain In-N-Out Burger.

Proceedings were first brought in 2017 by In-N-Out Burger who claimed that Down-N-Out was "deceptively similar", passed itself off as In-N-Out, infringed In-N-Out's registered trade marks, and has engaged in misleading and deceptive conduct.

The Court held that by using the names DOWN-N-OUT, DOWN N’OUT and D#WN N’OUT in connection with their burger business, the owners of the ‘Down N’ Out’ had infringed In-N-Out Burger’s registered trade marks, engaged in misleading or deceptive conduct in contravention of the Australian Consumer Law, and committed the tort of passing off.

Down N’ Out made a costly error not creating their own distinctive branding and by cutting it fine with a well-known chain.

Update 1.10.2020

Down N’ Out has since rebranded itself as “Nameless Bar” and have removed all references to Down N’ Out from their stores, menus, website, marketing and branding. The owners have also applied for a trade mark registration for “Nameless Bar”, perhaps as a homage to the four-year legal battle over a name with the fast food giant In-N-Out Burger.

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