McD Asia Pacific LLC v Hungry Jack's Pty Ltd

In the Federal Court of Australia, McD Asia Pacific LLC, the registered owner of the BIG MAC trade mark, filed a lawsuit against Hungry Jack's Pty Ltd, alleging infringement of its trade marks, misleading or deceptive conduct under the Australian Consumer Law, and seeking the cancellation of certain trade marks. McD Asia Pacific alleged that Hungry Jack's introduced the BIG JACK trade mark with the intent to deceive consumers into believing it was associated with McD Asia Pacific's BIG MAC trade mark. Hungry Jack's responded by asserting that there was no deceptive similarity between the BIG JACK and BIG MAC trade marks, and that it had not engaged in any misleading or deceptive conduct. The case also involved a cross-claim by Hungry Jack's for the removal of McD Asia Pacific's MEGA MAC trade mark from the Register for non-use.

The central legal issues in the case were whether Hungry Jack's trade marks BIG JACK and MEGA JACK were deceptively similar to McD Asia Pacific's trade marks BIG MAC and MEGA MAC, respectively, and whether Hungry Jack's had engaged in misleading or deceptive conduct. The court needed to determine if the use of the BIG JACK trade mark by Hungry Jack's constituted an infringement under section 120 of the Trade Marks Act 1995 (Cth), and if there were grounds for the cancellation of the trade marks under sections 44, 60, and 88 of the Act. Additionally, the court had to consider whether the MEGA MAC trade mark was subject to removal from the Register for non-use under section 92(4)(b) of the Act. Lastly, the court had to decide if Hungry Jack's representation that its burgers contained 25% more Aussie beef was misleading or deceptive under section 18 of the Australian Consumer Law.

The court found that the BIG JACK trade mark was not deceptively similar to the BIG MAC trade mark, nor was the MEGA JACK trade mark similar to the MEGA MAC trade mark. Consequently, McD Asia Pacific failed to prove that Hungry Jack's trade marks infringed its registered trade marks. The court also determined that there were no grounds for the cancellation of the BIG JACK trade mark under sections 44, 60, or 88 of the Trade Marks Act. However, the MEGA MAC trade mark registration should be amended to exclude certain goods. The court held that Hungry Jack's had engaged in misleading or deceptive conduct by making the 25% more Aussie beef representation.

The court issued orders requiring the parties to draft short minutes of order reflecting the court's reasons and to address any residual issues, including costs. If the parties could not agree on the terms of the draft minutes, the areas of disagreement were to be outlined in mark-up. Entry of orders was governed by Rule 39.32 of the Federal Court Rules 2011.