Fast food chain Hungry Jack's has returned serve – without fries – in a legal bun fight with McDonald's over its Big Mac lookalike burger, dubbed the Big Jack.
McDonald's Asia Pacific filed Federal Court proceedings on August 28 against Hungry Jack's over its rival's new burger, which it claims is "substantially identical with or deceptively similar" to its own Big Mac trademark.
Hungry Jack's has been the owner of the registered trademark “Big Jack” since November last year but McDonald's says the trademark "is liable to be cancelled, and should in the exercise of the court's discretion be cancelled" on a number of grounds, including that it is "likely to deceive or cause confusion" among consumers.
Hungry Jack's appears unchastened by the fast feud. It released a television advertisement in September to capitalise on the publicity or, in its own words, to explain the "significant difference" between the two burgers.
In a defence filed in the Federal Court on Friday, Hungry Jack's lawyers said consumers were "well aware" of the "competitive rivalry between Hungry Jack’s and [McDonald's]" and it had not infringed the latter's trademarks. Consumers would not be deceived into thinking the Big Jack was a McDonald's product, they said.
Hungry Jack's said it was entitled to use the Big Jack trademark, which played on the company's name and the name of "its founder and current owner, Jack Cowin". The word Jack was "closely associated by consumers with Hungry Jack's' goods and services", the company's lawyers said.
Hungry Jack's said McDonald's "do not have a trademark, or any other enforceable intellectual property right in the appearance, build and/or ingredients of the Big Mac burger", and its burger differed in appearance, build, size, taste and cooking method.
It said if there were any similarities between the Big Mac and the Big Jack, "those similarities are common characteristics of hamburgers sold in quick service restaurants in Australia and overseas".
McDonald's is seeking a declaration that Hungry Jack's infringed its Big Mac trademark and a related Mega Mac trademark. But Hungry Jack's is resisting that course and said it had not used its separate Mega Jack trademark in any case. It had filed an application to the Registrar of Trade Marks for removal of its trademark due to non-use.
McDonald's has asked the Federal Court to make orders restraining Hungry Jack's from using its new trademarks or any others "substantially identical or deceptively similar" to McDonald's trademarks, and an order cancelling the Big Jack trademark.
It is also seeking damages, interest and costs and an order that Hungry Jack's destroy all "promotional materials, including physical and electronic brochures, menus, advertising and marketing materials, stationery, signage, packaging and documents" using the allegedly infringing trademarks.
The parties will appear in court for a preliminary hearing on October 2.
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