The recent Australian Federal Court decision of McD Asia Pacific LLC v Hungry Jack’s Pty Ltd [2023] FCA 1412 confirms on one aspect that, for the purposes of registered trade mark infringement in Australia1, the reputation of each trade mark is not to be considered when determining whether the trade marks are deceptively similar2.
The Australian Federal Court held that Hungry Jack’s (i.e. Burger King in the USA) registered trade mark BIG JACK (word)3 was not deceptively similar to McDonald’s registered trade mark BIG MAC (word)4 and therefore held that there was no registered trade mark infringement.
Whilst there is a degree of artificiality in the approach, each trade mark must be considered afresh, shorn of knowledge of the reputation of both5.
The Court held that the word BIG is a common adjective and may be regarded as both laudatory as well as descriptive6. On the basis of the doctrine of imperfect recollection, the consumer will recall to mind readily and identify that the respective words JACK (of BIG JACK) and MAC (of BIG MAC) are the important and distinctive parts of the respective marks7. The ideas conveyed by the words JACK and MAC are therefore different8.
- Under Subsection 120(1) Trade Marks Act 1995 (Cth). ↩︎
- McD Asia Pacific LLC v Hungry Jack’s Pty Ltd [2023] FCA 1412 at [39] citing Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd HCA 8; (2023) 408 ALR 195. ↩︎
- Australian Trade Mark No 2050899. ↩︎
- Australian Trade Mark Nos 271329 and 271330. ↩︎
- McD Asia Pacific LLC v Hungry Jack’s Pty Ltd [2023] FCA 1412 at [94]. ↩︎
- McD Asia Pacific LLC v Hungry Jack’s Pty Ltd [2023] FCA 1412 at [104]. ↩︎
- McD Asia Pacific LLC v Hungry Jack’s Pty Ltd [2023] FCA 1412 at [104]. ↩︎
- McD Asia Pacific LLC v Hungry Jack’s Pty Ltd [2023] FCA 1412 at [105]. ↩︎