McD Asia Pacific LLC v Hungry Jack's Pty Ltd

Burley J opened the judgment by describing the case as a dispute about trade marks, misleading or deceptive conduct and hamburgers. That is a fair summary of what made the case commercially important. Two major quick service restaurant competitors were fighting over product naming, trade mark registrations and a comparative advertising campaign, all at the same time.

McDonald’s relied on its registered trade marks for BIG MAC and MEGA MAC. The judgment records that BIG MAC had been sold in Australia since McDonald’s operations commenced here, and that McD Asia Pacific was the registered owner of the BIG MAC and MEGA MAC word marks. Hungry Jack’s, which had also operated in Australia since 1971, launched burgers called BIG JACK and MEGA JACK in early 2020.

McDonald’s said those names infringed its registered marks. It also sought removal of Hungry Jack’s BIG JACK registration from the Trade Marks Register. Hungry Jack’s denied infringement, defended its registration and cross-claimed to remove McDonald’s MEGA MAC registration for non-use in part. On top of that, McDonald’s alleged that Hungry Jack’s had misled consumers by claiming the BIG JACK had "25% more Aussie beef" than the BIG MAC.

That combination makes the case especially useful for business owners. It was not just a fight about whether two names sounded alike. It was also about how registrations can be used defensively, how non-use can narrow a registration, and how comparative advertising can fail even where the naming strategy survives.

The infringement case was ultimately narrowed. The judgment says that, although McDonald’s pleaded a broader case, in closing submissions it confined its infringement claim to section 120(1) of the Trade Marks Act 1995 (Cth). Hungry Jack’s did not dispute that it was using BIG JACK and MEGA JACK as trade marks for relevant goods. It also did not dispute that the goods were within the relevant registered goods.

That meant the real issue for infringement was whether the Hungry Jack’s signs were deceptively similar to the McDonald’s registered marks.

The court also had to decide whether Hungry Jack’s BIG JACK registration should be removed from the Register under the grounds relied on by McDonald’s, including sections 44, 60 and 88. Separately, Hungry Jack’s cross-claim required the court to decide whether McDonald’s MEGA MAC registration should be removed for non-use under section 92(4)(b), and if so whether the court should exercise the discretion under section 101(3) to allow the mark to remain registered for certain goods.

Finally, the court had to determine the ACL claim. The question there was whether Hungry Jack’s representation that the BIG JACK contained "25% more Aussie beef" than the BIG MAC was misleading or deceptive in contravention of section 18 of the Australian Consumer Law.

The judgment sets out the orthodox Australian approach to deceptive similarity. The marks are not compared side by side in a careful, forensic way. Instead, the court asks what impression a notional buyer with ordinary intelligence and imperfect recollection would carry away from the registered mark, and whether the later sign is likely to deceive or cause confusion when used in ordinary commercial life.

Burley J referred to well-known authorities including Australian Woollen Mills, Shell and Hashtag Burgers. The judgment explains that the question is one of evaluation and impression, taking into account the market setting and the way ordinary people behave. The issue is whether there is a real likelihood that some people will wonder or be left in doubt about whether the products come from the same source.

The judgment also deals with intention. McDonald’s alleged that Hungry Jack’s deliberately adopted BIG JACK and MEGA JACK to promote in consumers’ minds a connection or affiliation with BIG MAC and MEGA MAC. The court noted that intention can be relevant, because a trader who deliberately fashions a sign to mislead may provide strong evidence about likely confusion. But intention is only one factor. It does not replace the statutory comparison.

A particularly important feature of the case is that it was decided after the High Court’s decision in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd. Burley J recorded that the parties had asked that judgment in this case await the High Court’s decision because one issue was the extent to which reputation is relevant to deceptive similarity. After Self Care was delivered, the parties made further written submissions and the court took that decision into account.

The practical effect is significant. The judgment confirms that, for section 120(1), reputation based on actual use of the registered mark is not part of the deceptive similarity analysis. The focus remains on the registered mark, the alleged infringing sign, the notional buyer and imperfect recollection. For businesses, that means a famous brand does not automatically get a wider monopoly in an infringement case simply because it is famous.

The court’s summary conclusions are set out clearly in paragraph 11 of the judgment. Burley J held that BIG JACK is not deceptively similar to BIG MAC within section 120 of the Trade Marks Act. Burley J also held that MEGA JACK is not deceptively similar to MEGA MAC within section 120. As a result, McDonald’s did not establish that Hungry Jack’s use of those marks infringed its registered trade marks.

On the validity challenge, the court held that the BIG JACK mark was not liable to be removed from the Register under any of sections 44, 60 or 88. That meant Hungry Jack’s not only defeated the infringement claim on deceptive similarity, but also retained an additional defence based on its own registration under section 122(1)(e).

On the cross-claim, Hungry Jack’s partly succeeded. The court held that McDonald’s MEGA MAC mark was not to be removed entirely for non-use, but the registration should be amended to remove certain goods. The judgment identifies those goods as biscuits, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings and sugar.

On the ACL issue, McDonald’s succeeded. Burley J held that Hungry Jack’s had engaged in misleading or deceptive conduct in breach of section 18 by making the "25% more Aussie beef" representation. The judgment also makes clear that this was a liability decision only. Questions of loss, damage and pecuniary relief had been split off to be dealt with later.

Businesses should not read this case as a green light to adopt names that deliberately sit close to a competitor’s flagship product. Hungry Jack’s still had to defend Federal Court proceedings, and the case turned on the specific marks, registrations and legal tests before the court. The safer reading is that trade mark infringement is technical and statutory. Commercial cheekiness, market rivalry or obvious reference to a competitor does not by itself answer the legal question.

The stronger practical lesson is that naming and advertising need separate legal treatment. A business may survive a trade mark attack but still lose on a comparative claim. That is exactly what happened here. If your campaign says your product has more of something than a competitor’s product, such as more beef, more weight, more ingredients or more content, you need evidence that supports the claim as consumers are likely to understand it.

The case also highlights the importance of registration strategy. Hungry Jack’s own BIG JACK registration mattered because it provided an additional defence once the validity challenge failed. At the same time, McDonald’s MEGA MAC registration was vulnerable to a non-use attack for some goods. Businesses often focus on filing marks, but this case shows that maintaining registrations and using them for the goods claimed can be just as important.

For franchise systems and multi-site businesses, the risk is amplified. A centrally approved product name or campaign can create system-wide exposure. If the issue is trade mark infringement, every outlet using the name may be drawn into the commercial consequences. If the issue is misleading advertising, the campaign can create broad consumer law exposure across the network.

This judgment is a useful prompt for pre-launch governance. The evidence in the case included trade mark registrations, marketing evidence, campaign material, testing protocols, food weight testing and witness evidence from marketing and analytics staff. That tells businesses what courts often look at when a launch is challenged.

For naming issues, the starting point is the register and the exact goods covered by relevant registrations. A clearance review should not stop at whether a name feels different enough. It should consider the registered goods, the way the sign will actually be used, and whether your own filing strategy is worth pursuing. If you already have registrations, review whether they are being used for the goods claimed so they are less exposed to non-use attack.

For advertising issues, focus on the exact words consumers will see and hear. Comparative claims are often short, but they can carry a precise factual meaning. If the claim is about quantity or composition, make sure the testing method and the product comparison match the representation being made. Internal confidence in a campaign is not a substitute for evidence.

Finally, document approvals. If a campaign is challenged, contemporaneous records about product development, naming decisions, testing and legal review can become important very quickly.

The hearing took place from 5 to 8 December 2022. Burley J delivered judgment on 16 November 2023. The judgment records that the parties were to confer and provide draft short minutes of order and a proposed timetable for any further matters, including costs. It also records that liability was determined separately from issues of loss, damage and pecuniary relief.

Accordingly, this page explains the liability findings in the published judgment. It does not attempt to describe any later orders or relief that are not set out here.

This page is based on the Federal Court of Australia judgment in McD Asia Pacific LLC v Hungry Jack’s Pty Ltd [2023] FCA 1412, delivered by Burley J on 16 November 2023. The judgment sets out the parties, the pleaded issues, the evidence categories, the legal tests applied and the court’s conclusions on liability.

The judgment itself states that questions of loss, damage and pecuniary relief were to be dealt with separately. Readers should keep that procedural point in mind when considering the outcome described above.