(AUS) Burger Battle: 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.


(AUS) Burger Battles: Down N' out, is '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.


(AUS) Iron Chef cooks-up trade mark opposition

The Delegate in the trade mark opposition for IRON CHEF v IRON CHEF (Fuji Television Network Inc v Iron Chef Pizza Pty Ltd (2020) ATMO 107) found that even though the marks were identical, the opponent’s registered rights for “restaurant and café services” were not the same (or similar) to the applicant’s food delivery services.

Fuji Television Network (the Opponent), the company behind the Australian production of the Iron Chef cooking shows originating in Japan, felt aggrieved that Iron Chef Pizza (the applicant) was intending to develop an app called IRON CHEF to facilitate the ordering and delivery of restaurant meals as well as provide food delivery services.

The Delegate found that the opponent’s “restaurant and café services” might have some similar trade channels to food delivery services, however the nature and use of the services differ. Food delivery services provide transport of food from restaurant to consumer while restaurants and cafes provide food for consumption.

The opposition consequently failed.

This is an important reminder for trade mark owners wanting to oppose identical trade marks in Australia. Services should not be viewed as similar solely on the basis of subject.


(AUS & NZ) KFC's COVID Pivot

KFC recently announced that it will temporarily cease use of its tagline to promote their products given the contradiction to public health advice amid the COVID-19 pandemic. In recent promotions, KFC blurred the tagline so that “IT’S GOOD” are the only legible words.

First adopted in 1952 the tagline, “IT’S FINGER LICKIN’ GOOD”, is synonymous with KFC’s global brand. However, KFC believes the concept is contrary to the current climate in which face masks, sanitising hands and the avoidance of hand-to-face contact is the norm.

If KFC is to preserve the slogan’s trade mark registration, they will need to be careful to avoid a perceived abandonment of the trade mark. This case study demonstrates how the perception of a trade mark (regardless of its popularity) is often subject to external and uncontrollable factors.

How companies manage and respond in these situations is critical to whether they continue to maintain a positive perception in public (a great ‘non-food’ related example of this scenario can be found here).


(UK & US) Special delivery served to @pizza by &pizza

&pizza is a well-known pizza chain business on the United States’ (US) east coast, famous its oval shaped pizzas.

&pizza’s owners initiated legal proceedings against the British @pizza business alleging copyright, trade mark infringement and trespassing. They claim @pizza’s owners visited an &pizza restaurant in Washington in the US, taken photographs of the oval shaped pizzas without permission, copied the &pizza website and promotional materials and mimicked these to create their @pizza in the UK.

The American &pizza business was ultimately not successful in the legal proceedings. The Court found that the acts of infringement did not occur in the US jurisdiction and that @pizza’s conduct in taking photos of the oval pizzas without permission and copying the interior layout of the restaurant was neither a breach of copyright or trespassing.

Although the Court conceded @pizza’s actions could negatively impact on &pizza’s business, US courts do not have the power to grant injunctions that carry an ‘extraterritorial effect’. Therefore, if &pizza wished to pursue @pizza further, it should initiate proceedings in the UK.

This case certainly demonstrates a fine line between imitation being the greatest form of flattery and cunning (or bad faith) business practice.


(Austria) Fast fashion is plastic fantastic

McDonald’s introduced a swimmer range made from plastic drinking straws in Austria. The collection is reportedly made using a combination of seaqual fibre (one of the highest certified earth-friendly fibres in the world), and plastic straws. The combination ensures each swimwear piece is of high quality, quick drying and pleasant to wear. According to Nikolaus Piza, MD of McDonald’s Austria, the McDonald’s sustainability strategy will reduce more than 90 tons of plastic annually.