Federal Court of Australia

McD Asia Pacific LLC v Hungry Jack’s Pty Ltd [2023] FCA 1412

ORDERS

THE COURT ORDERS THAT:

1.    The parties confer and supply to the chambers of Justice Burley by 4pm on 7 December 2023 draft short minutes of order giving effect to these reasons and a proposed timetable for the resolution of any further matters for determination, including costs.

2.    Insofar as the parties are unable to agree to the terms of the draft short minutes of order referred to in Order 1, the areas of disagreement be set out in mark-up.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

BURLEY J:

1.    INTRODUCTION

1.1    The proceedings

1    This is a dispute about trade marks, misleading or deceptive conduct and hamburgers.

2    The applicants are McD Asia Pacific LLC and McDonald’s Australia Limited (collectively, McDonald’s). They are respectively the licensor and authorised user of the branding associated with the McDonald’s chain of quick service restaurants which first opened in Australia in 1971 and by 2020 had over 890 outlets operating in Australia. As at 2020, McDonald’s and its various affiliated franchisees and licensees operated over 35,000 McDonald’s restaurants in over 100 countries and territories around the world. The BIG MAC hamburger was first sold in the United States of America in 1968 and has been sold in Australia since operations commenced here. McD Asia is the registered owner of trade marks for the words BIG MAC and MEGA MAC.

3    The respondent is Hungry Jack’s Pty Ltd. It is a franchisee of Burger King Corporation, a United States entity, and trades under the name HUNGRY JACK’S and associated branding. It is a competitor of McDonald’s in the quick service restaurant business, in Australia and worldwide, and has also operated in Australia since 1971. In early 2020, Hungry Jack’s began to sell hamburgers by reference to the names BIG JACK and MEGA JACK.

4    McDonald’s contends that:

(a)    Hungry Jack’s has infringed its BIG MAC and MEGA MAC trade marks in breach of s 120 of the Trade Marks Act 1995 (Cth) by using the signs BIG JACK and MEGA JACK in relation to its hamburgers;

(b)    orders should be made for the removal from the Trade Marks Register of Hungry Jack’s BIG JACK trade mark; and

(c)    Hungry Jack’s has misrepresented to consumers that its BIG JACK hamburger contains 25% more Aussie beef than the BIG MAC hamburger (the 25% more Aussie beef representation) in breach of the provisions of the Australian Consumer Law (ACL) (Schedule 2 of the Competition and Consumer Act 2010 (Cth) (ACL claim).

5    Hungry Jack’s denies that it has infringed McDonald’s’ trade marks and contends that its BIG JACK mark should remain on the Register, the consequence of which is that it has a complete defence to the infringement allegation pursuant to s 122(1)(e) of the Trade Marks Act. Hungry Jack’s contends in its cross-claim that McDonald’s’ MEGA MAC trade mark should be removed from the Register for non-use pursuant to s 92(4)(b) of the Trade Marks Act. It also contends that the 25% more Aussie beef representation is correct and that the ACL claim must be dismissed.

6    A significant issue in the case is whether or not the impugned Hungry Jack’s trade marks are deceptively similar to the McDonald’s trade marks as prescribed by ss 10 and 120 of the Trade Marks Act. At the time of the hearing, one relevant issue was the extent to which the reputation is relevant to such an enquiry. That question was then pending for decision by the High Court and the parties submitted that the decision in the present case should await that decision. Judgment in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8; (2023) 408 ALR 195 was later delivered and the parties have subsequently made written submissions as to its effect, which I have taken into account in these reasons.

7    By orders made on 19 March 2021, issues of loss and damage and quantum of the pecuniary relief sought were to be heard and determined after and separately from all other issues in the proceeding. Accordingly, this judgment addresses only questions of liability.

1.2    The Registered Trade Marks

8    McD Asia is the registered owner of two registrations for the words BIG MAC, being trade mark Nos 271329 and 271330, both of which were filed on 14 August 1973. The first is in respect of goods in class 29 and the second is in respect of goods in class 30. The goods relevant to the infringement case are emphasised in bold:

Class 29: Meat, poultry and game, including hamburger patties, meat extracts; preserved, dried and cooked fruits and vegetables, eggs, milk and other dairy products; edible oils and fats, preserves, pickles

Class 30: Hamburgers; coffee, tea, cocoa, rice, coffee substitutes; flour and preparations made from cereals; bread, biscuits; yeast, baking powder; salt, mustard, pepper, vinegar, sauces, spices

9    McD Asia is also the owner of trade mark No 1539657 for the words MEGA MAC filed on 7 February 2013 in class 30 for:

Edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar

10    Hungry Jack’s is the registered owner of trade mark No 2050899 for BIG JACK, filed on 14 November 2019, in respect of the following goods:

Class 29: Hamburgers and burgers; meat burgers; vegetable burgers; cheese burgers; hamburger patties; meat, poultry, fish and game; meat extracts; sausages; meat products; chicken products; prepared vegetable products; chicken nuggets; fried chicken; grilled meat; sandwich fillings, being meat or cheese based; preserved, frozen, dried and cooked fruits and vegetables; potato chips; vegetable salads; fruit chips; fruit salads; pickles prepared from fruits and vegetables; potato and onion products included in this class; vegetable patties; eggs, milk and milk products including milk shakes and malted milks; beverages having a milk base; beverages made from yoghurt; fruit flavoured beverages having a milk base; preserves, pickles and relishes; jams, jellies

Class 30: Hamburgers and burgers (sandwich with filling); steak sandwiches and sandwiches; preparations made from bread; sandwiches containing meat including steak and hamburgers; steaks and burgers contained in bread rolls; hamburgers in buns; bread buns; foodstuffs made from cereals, corn, dough, farinaceous products, maize, oats, rice, sugar or flour; beverages made from cereals, chocolate, cocoa, coffee or tea; bread; biscuits; pastries; cakes; confectionery; prepared desserts (chocolate based); prepared desserts (confectionery); prepared desserts (pastries); flavoured toppings for desserts; salts included in this class, pepper, mustard, sauces, spices, vinegar, sauces (condiments); baking powder, yeast; salad dressings; fruit sauces, relishes; coffee, tea, cocoa, coffee substitutes; sugar; ices; sandwiches containing cheese

1.3    Summary of conclusions

11    For the reasons set out below, I have concluded that:

(a)    BIG JACK is not deceptively similar to BIG MAC within s 120 of the Trade Marks Act;

(b)    MEGA JACK is not deceptively similar to MEGA MAC within s 120 of the Trade Marks Act;

(c)    As a consequence of (a) and (b), McDonald’s has not established that the impugned use of the Hungry Jack’s trade marks infringes its registered trade marks;

(d)    The Hungry Jack’s BIG JACK mark is not liable to be removed from the Register pursuant to any of ss 44, 60 or 88 of the Trade Marks Act, as a result of which Hungry Jack’s has an additional defence to the infringement allegation pursuant to s 122(1)(e) of the Trade Marks Act;

(e)    The McDonald’s MEGA MAC mark is not liable to be removed from the Register for non-use, save that the registration should be amended to remove the following goods: biscuits, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar;

(f)    Hungry Jack’s has engaged in misleading or deceptive conduct in breach of s 18 of the ACL by making the 25% more Aussie Beef representation.

12    I will make orders requiring the parties to provide short minutes of order giving effect to these reasons and addressing any residual issues, including costs.

2.    THE WITNESSES

2.1    McDonald’s

13    Tim Kenward has been Marketing Manager of McDonald’s Australia since July 2017. He has been associated with McDonald’s Australia since 2011, when he worked as a marketing consultant to the company from January 2011 until November 2012. He was then appointed National Brand Manager and, in 2015, Senior Brand Manager before being appointed to his present position.

14    Mr Kenward provided three affidavits. In his first he gives evidence about: McDonald’s business and trade marks; the BIG MAC hamburger; the BIG MAC Tagline “two all-beef patties, special sauce, lettuce, cheese, pickles, onions – on a sesame seed bun”; the BIG MAC build, being the club sandwich styled three tiered sesame seed bun with two beef patties; the MEGA MAC hamburger; and Hungry Jack’s activities which led to the commencement of these proceedings. In his second affidavit he responds to the affidavit of Scott Baird. In his third affidavit he provides supplementary evidence to his first affidavit in response to some objections taken to his first affidavit concerning the use by McDonald’s of the BIG MAC and MEGA MAC marks. Mr Kenward was cross examined.

15    Amandeep Dhanju has since January 2022 been Head of Business Insights and Analytics at McDonald’s Australia. She has a Bachelor of Science degree majoring in mathematics and computer sciences and has worked in the field of data analytics since 2007. Her current role is to lead a team providing advice on sales information about the performance of McDonald’s products, including providing regular reports and campaign analysis, including historical data analysis to management. Ms Dhanju explained the process of extracting data from McDonald’s’ records for the preparation of spreadsheets relied upon for the purpose of demonstrating use of the MEGA MAC mark. She was not cross examined.

16    Scott Balshaw is Systems Co-ordinator of Agrifood Technology in Victoria, a position he has held since 2013. He commenced working for Agrifood in 1992 as an analyst in the food safety laboratory. Mr Balshaw was provided with a test protocol for use in the conduct of tests to weigh BIG MAC and BIG JACK hamburger meat patties and conducted tests on 14 July 2021 in support of the ACL claim. He describes the testing that he carried out on patties acquired from 10 Hungry Jack’s restaurants and 10 McDonald’s restaurants located in Melbourne and reports on the results. Mr Balshaw was cross examined.

17    Ruma Prestney is Team Leader at Agrifood. She holds a PhD in analytical chemistry. Dr Prestney provided two affidavits. In her first affidavit, she gives evidence of testing that she conducted on various BIG MAC and BIG JACK hamburgers acquired from 20 locations in Brisbane to ascertain their weight. She reports on her results. In her second affidavit, Dr Prestney gives evidence of further testing that she conducted on 13 June 2021 in accordance with a protocol emailed to her by the solicitors engaged by McDonald’s, Spruson & Ferguson Lawyers Pty Ltd (SFL), and reports on the results. Dr Prestney was cross examined.

18    Lucy Hartland is a solicitor in the employ of SFL. Ms Hartland provided two affidavits. In her first affidavit, she exhibits correspondence with the solicitors representing Hungry Jack’s (Addisons), the trade marks in suit, and screen shots and reproductions of the impugned advertisements released by Hungry Jack’s. In her second affidavit, she annexes the results of searches of the Register for certain trade marks. Ms Hartland was not cross examined.

2.2    Hungry Jack’s

19    Scott Baird has since January 2015 been the Chief Marketing Officer of the respondent. He reports to the Chief Executive Officer of Hungry Jack’s. He gives evidence of the history of Hungry Jack’s in Australia and its position as a franchisee of Burger King. He explains that when Hungry Jack’s commenced operations in Australia it could not adopt the name BURGER KING because of trade mark issues with a third party and so elected to trade under the HUNGRY JACK’S trade mark, which had been registered in Australia since 1963. He gives evidence about the Hungry Jack’s outlets in Australia and the development of the BIG JACK and MEGA JACK hamburgers. Mr Baird was cross-examined.

20    Jennifer Jin is a primary school teacher who had been employed at McDonald’s on a casual basis from 2014 until 2016. She gives evidence about her experience of cooking hamburgers at McDonald’s and aspects of nomenclature. She was not cross examined.

21    Justine Munsie is a solicitor in the employ of Addisons, who represent Hungry Jack’s. She exhibits the results of various trade mark searches and gives evidence about how various restaurants promote the sale of meat products by reference to weight. She was not cross examined.

22    Brodie Campbell is a solicitor in the employ of Addisons. He gives evidence of the steps he took to make online purchases of Hungry Jack’s and McDonald’s hamburgers and exhibits screenshots from various websites and packaging. He was not cross examined.

3.    TRADE MARK INFRINGEMENT CASE

3.1    Introduction

23    Although its pleaded case is broader, in closing submissions McDonald’s infringement case was confined to reliance on s 120(1) of the Trade Marks Act.

24    Section 120(1) and (2) provide (notes omitted):

120    When is a registered trade mark infringed?

(1)    A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.

(2)    A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:

(a)    goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered; or

(b)    services that are closely related to registered goods; or

(c)    services of the same description as that of services (registered services) in respect of which the trade mark is registered; or

(d)    goods that are closely related to registered services.

However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.

25    McDonald’s alleges that its trade marks have been infringed in two ways.

26    First, it contends that Hungry Jack’s’ use of the words BIG JACK involves infringement of its registered trade marks for BIG MAC. In refining its case in its closing submissions, McDonald’s submits that its registered trade mark No 271330 for BIG MAC for “hamburgers” in class 30 has been infringed by Hungry Jack’s’ use of the BIG JACK name because it is a sign that is deceptively similar to the BIG MAC mark.

27    Secondly, it contends that Hungry Jack’s’ use of the words MEGA JACK involves infringement of its registered trade mark No 1539657 for MEGA MAC for “edible sandwiches, meat sandwiches” in class 30 because it is a sign that is deceptively similar to the MEGA MAC mark.

28    McDonald’s pleads that Hungry Jack’s deliberately adopted the BIG JACK and MEGA JACK marks for the purpose of promoting in the mind of consumers a connection or affiliation between BIG MAC and MEGA MAC hamburgers and those (respectively) marked BIG JACK and MEGA MAC. Hungry Jack’s denies this allegation.

29    Hungry Jack’s does not dispute that its use of the impugned marks is use “as a trade mark” in relation to the sale of hamburgers or that those goods are “goods or services in respect of which the trade mark is registered” within s 120(1). As a consequence, the only relevant issue for determination is whether or not the impugned signs are deceptively similar to the McDonald’s trade marks.

30    The term “deceptively similar” is defined in section 10 of the Trade Marks Act:

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

3.2    Law regarding deceptive similarity

31    In Australian Woollen Mills Limited v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641 at 658, Dixon and McTiernan JJ described the test for deceptive similarity as follows:

But, in the end, it becomes a question of fact for the court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained.

In deciding this question, the marks ought not, of course, to be compared side by side.  An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.  The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.  The effect of spoken description must be considered.  If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning play an important part.  The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.  Evidence of actual cases of deception, if forthcoming, is of great weight.

32    Their Honours emphasised that the determination for the court is one of estimation and evaluation (at 659):

The main issue in the present case is a question never susceptible of much discussion. It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs.

33    The summary provided by Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 (Shell Oil) also encapsulates the approach required by s 120(1):

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question.  The marks are not now to be looked at side by side.  The issue is not abstract similarity, but deceptive similarity.  Therefore the comparison is the familiar one of trade mark law.  It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions.

34    In Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235; (2020) 385 ALR 514 (Nicholas, Yates and Burley JJ), the Full Court noted at [64] that the distinction between consideration of whether one mark is deceptively similar to another, rather than substantially identical, lies in the point of emphasis on the impression or recollection which is carried away and retained of the registered mark, when conducting the comparison. In this context, the Full Court said:

…allowance must be made for the human frailty of imperfect recollection. In New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Ltd [1989] FCA 124; 86 ALR 549, in a passage in his judgment not affected by the proceedings on appeal, Gummow J said at 589:

In determining whether MOO is deceptively similar to MOOVE, the impression based on recollection (which may be imperfect) of the mark MOOVE that persons of ordinary intelligence and memory would have, is compared with the impression such persons would get from MOO; the deceptiveness flows not only from the degree of similarity itself between the marks, but also from the effect of that similarity considered in relation to the circumstances of the goods, the prospective purchasers and the market covered by the monopoly attached to the registered trade mark:  Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414–15; Polaroid Corp v Sole N Pty Ltd [1981] 1 NSWLR 491 at 498.  The latter case is also authority (at 497) for the proposition that the essential comparison in an infringement suit remains one between the marks involved, and that the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit.

This passage was approved by the Full Court in C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; 52 IPR 42 (Ryan, Branson, Lehane JJ) at [44].

35    In Self Care, the High Court summarised the position as follows (citations omitted):

[28]    The question to be asked under s 120(1) is artificial – it is an objective question based on a construct. The focus is upon the effect or impression produced on the mind of potential customers. The buyer posited by the test is notional (or hypothetical), although having characteristics of an actual group of people. The notional buyer is understood by reference to the nature and kind of customer who would be likely to buy the goods covered by the registration. However, the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness arising from the use of the mark prior to filing or, as will be seen, any reputation associated with the registered mark.

[29]    The issue is not abstract similarity, but deceptive similarity. The marks are not to be looked at side by side. Instead, the notional buyer's imperfect recollection of the registered mark lies at the centre of the test for deceptive similarity. The test assumes that the notional buyer has an imperfect recollection of the mark as registered. The notional buyer is assumed to have seen the registered mark used in relation to the full range of goods to which the registration extends. The correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods covered by the registration), with the impression that the notional buyer would have of the alleged infringer's mark (as actually used). As has been explained by the Full Federal Court, "[t]hat degree of artificiality can be justified on the ground that it is necessary in order to provide protection to the proprietor's statutory monopoly to its full extent".

(Emphasis added.)

36    Deceptive similarity must be assessed on the basis of whether there is a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source; Southern Cross Refrigerating Company v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1953) 91 CLR 592 at 595; Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365 at [50]; Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12; (2000) 202 CLR 45 at [83]. As the High Court noted in Self Care at [32], there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products… come from the same source”.

37    The question of intention to deceive or cause confusion is material to the present case. In this regard, the leading authority is again the decision of Dixon and McTiernan JJ in Australian Woollen Mills at 657:

The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive.

38    As this passage makes clear, the question of whether or not an infringing use was intentional is but one factor for the court to take into account in determining whether there is a reasonable probability of deception or confusion; Self Care [30]; Hashtag Burgers at [67] – [68].

39    In resolving a long-standing controversy on the subject, the High Court determined in Self Care that reputation based on actual use of the registered trade mark should not be taken into account when assessing deceptive similarity under s 120(1); Self Care at [3], [36], [46], [47], [51]. That conclusion was explained by reference to the fact that it is the registration of a mark in respect of particular goods or services that confers monopoly rights on the registered owner, and the scope of that right is not to be varied by reference to inherently uncertain notions concerning whether or not the user of the mark has developed a reputation in it, which notions were antithetical to the type of certainty that the Register was designed to nurture; Self Care [37] – [40], [48]. For that reason, the Court explained at [49] that it is impermissible to attribute to the notional buyer any familiarity with the actual use of a registered trade mark:

…The inquiry under s 120(1) is directed to avoiding deception and confusion between trade marks, and protecting the registered owner's trade mark rights in relation to the particular goods covered by the registration. It is not concerned with and does not seek to protect "the commercial value or 'selling power' of a mark"

40    However, the reasoning in Self Care has ignited a further dispute between the parties concerning what the High Court meant in the passage at [29], as emphasised above at [35], (and elsewhere) by its reference to “actual use” on the part of the alleged infringer.

41    In its supplementary submissions, Hungry Jack’s contends that the High Court made it clear that deceptive similarity for the purpose of s 120(1) infringement analysis is to be assessed in the context of the respondent’s actual use of the accused mark, including usage of other aspects of packaging. It disputes the submission advanced by McDonald’s to the effect that particular or idiosyncratic circumstances surrounding the alleged infringer’s use are not relevant. By emphasizing “actual use”, Hungry Jack’s submits that the High Court conveyed that idiosyncratic circumstances of a particular respondent’s use are to be taken into account. Hungry Jack’s submits that the Court should now consider such matters as the presence of the Hungry Jack’s trade marks and livery on its restaurants. In this regard, it submits that Self Care has the effect of expanding the inquiry beyond that envisaged in earlier authority, because not only are generalised trade circumstances to be taken into account, what were previously considered to be (and Hungry Jack’s accepted were, prior to the decision in Self Care) extraneous and irrelevant matters such as the presence of other trade marks used on or in relation to the goods, are now to be taken into account. It relies in this respect on the High Court’s treatment of the facts in Self Care to demonstrate how the comparison should be made.

42    For the following reasons, I am unable to accept that submission.

43    In Self Care at [29], [33] it is apparent that the Court was referring to the actual use of the impugned trade mark in the sense of the use of the impugned sign alone, rather than the broader context of use. The Court was contrasting that use in fact (of the impugned mark) with the notional use of the registered mark on goods within the class of registration. That is the comparison that has long been established by the authorities. Several matters lead me to this view.

44    First, the focal point of the High Court’s consideration was on the relevance of reputation within the statutory test for deceptive similarity under s 120(1). In reaching its conclusions on that subject, the Court provided a succinct review of about a century of law on the subject of deceptive similarity, addressing briefly topics that have been the subject of detailed consideration by other Courts. It would be surprising if the Court intended to overrule or change well-established principle in the manner contended without addressing it squarely and in such short form. The better view is that it did not do so.

45    Secondly, the three cases cited in support of the proposition made in [29] were Shell Oil at 415, Wingate Marketing Pty Ltd v Levi Strauss & Co [1994] FCA 163; (1994) 49 FCR 89 at 128 and MID Sydney Pty Ltd v Australian Tourism Co Ltd [1998] FCA 1616; (1998) 90 FCR 236 at 245. Examination of those cases, and the passages cited, demonstrate the context of the reference to “actual use”.

46    A passage from Shell Oil (Windeyer J) at 415 is set out above. That familiar case concerned a dispute between two well-known companies that sold petrol and oils about whether Shell had infringed Esso’s trade mark for a “humanized oil drop” (described as the “Esso oil-drop man”) in a television commercial. The novelty of the case at the time arose because before that date (1961), moving images in a film had not been found to constitute trade mark infringement. The two short commercials displayed an animated oil drop man. Windeyer J found the man not to be substantially identical with the Esso oil drop man mark but that he was deceptively similar to it, reciting the legal test at 415 which is set out above at [33]. Significantly, in both of the impugned animations it was clear from the voiceover and the word SHELL appearing on the animated oil drop that the oil drop man was associated with Shell, not Esso. Nevertheless, the comparison of the “actual use” of the mark led Windeyer J to the conclusion that the impugned Shell oil drop man was deceptively similar to Esso’s trade mark. The presence of what might be said to amount to disclaimers of any connection with Esso was not relevant.

47    It is in this context that reference to the comparison of the impression based on recollection of the registered trade mark and “the impressions that such persons would get from the defendant’s television exhibitions” must be understood. Windeyer J was not, in referring to use of the impugned mark, implicitly including the application by the defendant of the word “SHELL” in connection with the animated figure. The only “actual use” was the use of the impugned mark.

48    In MID Sydney, Burchett, Sackville and Lehane JJ similarly observed at 245 that it is irrelevant that the respondent may “by means other than its use of the mark, make it clear that there is no connection between its business and that of MID”, citing the established position set out in Mark Foy’s v Davies Co-op Ltd [1956] HCA 41; (1956) 95 CLR 190 at 205 where Williams J (Dixon CJ agreeing) adopted the following statement of Lord Greene MR in Saville Perfumery Ltd v June Perfect Ltd (1939) 58 RPC 141 at 161:

In an infringement action, once it is found that the defendants mark is used as a trade mark, the fact that he makes it clear that the commercial origin of the goods indicated by the trade mark is some business other than that of the plaintiff avails him nothing, since infringement consists in using the mark as a trade mark, that is, as indicating origin.

49    In Wingate Marketing at 128, Gummow J addressed the comparison for the purposes of deceptive similarity, noting that it must be between the mark registered on the one hand “and the mark as used by the defendant on the other”. However, this cannot be taken to refer to aspects of the defendant’s use beyond the impugned mark itself. The reason for this was explained by his Honour in the passage that followed at pages 128 – 129:

(i) The comparison is between any normal use of the plaintiff’s mark comprised within the registration and that which the defendant actually does in the advertisements or on the goods in respect of which there is the alleged infringement, but ignoring any matter added to the allegedly infringing trade mark; for this reason disclaimers are to be disregarded,…(ii) However, evidence of trade usage in the sense discussed above, is admissible but not so as to cut across the central importance of proposition (i)…

(Emphasis added.)

50    Thirdly, the approach taken by Hungry Jack’s, in my view, is contrary to a correct reading of Self Care, where the Court said at [33] (footnotes included):

In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"81. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark82, as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark83. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark84.

(Italics in original. Emboldening added.)

51    The reference in the second sentence to “actual use of the mark” is again a limited reference to the impugned mark itself, not surrounding marks or disclaimers. This is apparent from the first sentence which in footnote 81 refers to the passage in New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Ltd [1989] FCA 124; (1989) 86 ALR 549 at 589, which I have set out above at [34]. It is clear that the Court is here reciting long-established authority that the whole of the conduct of the respondent is not taken into account when considering deceptive similarity. Footnote 82 repeats the citations identified in [29] which I have reviewed in relation to the second point above. It is plain that the High Court continues to focus on the “actual use” only of the respondent’s mark, not on the actual surrounding circumstances, which may include disclaimers or other marks. The relevant “surrounding circumstances” are confined to consideration of the way in which goods of the relevant kind are typically bought and sold.

52    Fourthly, Hungry Jack’s relies on passages in the High Court’s reasoning where it applies the facts. In that case the relevant question was whether PROTOX was deceptively similar to the registered trade mark BOTOX.

53    The Court said:

[69]    Allergan was correct to submit that, as the Full Court accepted, there are visual and aural similarities between the two marks. The word PROTOX uses two short consonants, "p" and "r", to make the syllable "pro", which is visually and aurally similar to "bo"; both "pro" and "bo" are "sounded through the lips together"; and the word "otox" is "distinctive and identical" between PROTOX and BOTOX and is an "identical rhyme". But, as the Full Court correctly said, "[c]onsumers would not have confused PROTOX for BOTOX". The words are sufficiently different that the notional buyer, allowing for an imperfect recollection of BOTOX, would not confuse the marks or the products they denote. The visual and aural similarities were just one part of the inquiry.

[70]    The question, then, was whether these similarities "imply an association" so that the notional buyer would be caused to wonder whether it might not be the case that the products come from the same source. The alleged deceptiveness was said to flow not only from the degree of similarity itself, but also from its effect considered in relation to the circumstances of the goods and the prospective purchaser and the market covered by the monopoly – anti-wrinkle creams in class 3. It is to be assumed that the products would be sold in similar trade outlets, including pharmacies, as well as through websites. The notional buyer has a recollection of the BOTOX mark being used on anti-wrinkle creams in class 3 in that context. The notional buyer sees the PROTOX mark used on a similar product – a serum which is advertised on its packaging and website to "prolong the look of Botox®". While the reputation of BOTOX cannot be considered, the relevant context includes the circumstances of the actual use of PROTOX by Self Care. "[P]rolong the look of Botox®" may suggest that Protox is a complementary product. However, as was observed by the primary judge, "it will be the common experience of consumers that one trader's product can be used to enhance another trader's product without there being any suggestion of affiliation".136 In this case, the back of the packaging stated in small font that "Botox is a registered trademark of Allergan Inc" and, although the assumption is that Botox is an anti-wrinkle cream, the website stated that "PROTOX has no association with any anti-wrinkle injection brand".

[71]    Applying the applicable principles,137 there is no real risk of confusion or deception such that the notional buyer will be caused to wonder whether it might be that the products come from the same source. What is required is a "real, tangible danger" of confusion or deception occurring.138 As explained, the marks are sufficiently distinctive such that there is no real danger that the notional buyer would confuse the marks or products. The similarities between the marks, considered in the circumstances, are not such that the notional buyer nevertheless is likely to wonder whether the products come from the same trade source. That conclusion is reinforced by the fact that the PROTOX mark was "almost always used in proximity to the FREEZEFRAME mark" and that there was "no evidence of actual confusion".

54    Hungry Jacks relies on these paragraphs to support the contention that Self Care should be read to endorse the concept that in considering deceptive similarity under s 120(1) it is relevant to take into account disclaimers and other features of the packaging of the defendant’s use. I do not consider that, taken in the context of the whole of the judgment, this is the correct conclusion.

55    The analysis at [69] is consistent with the statements of principle to which the Court earlier referred and adopted, the Court noting that the correct approach was to consider the notional use of BOTOX against the actual use of the PROTOX mark. Paragraph [70] includes parts that might suggest that the Court took into account factors that went beyond a comparison of the marks and had regard to extraneous features of the packaging. However, [71] commences with the statement that the Court is applying the “applicable principles”, cross-referencing (as footnote 137 identifies) to [26] – [33] which endorse the long-established principles identified above. In those circumstances, it appears to me that the relevant reasoning on the facts is to be found in third and fourth sentences of [71] as follows:

…As explained, the marks are sufficiently distinctive such that there is no real danger that the notional buyer would confuse the marks or products. The similarities between the marks, considered in the circumstances, are not such that the notional buyer nevertheless is likely to wonder whether the products come from the same trade source….

56    That conclusion picks up the comparison of the marks identified in [69]. Having reached that conclusion, the statement that the conclusion is “reinforced” by the proximity of the impugned use to the FREEZEFRAME mark may be regarded as obiter dicta, the legal conclusion having already been provided to the effect that regardless of the presence of the FREEZEFRAME mark, the impugned mark was not deceptively similar to BOTOX. To take a different view would render significant parts of the earlier reasoning in Self Care otiose in circumstances where it is apparent that no argument before the High Court involved the contention that any of the prior cases referring to the subject were incorrectly decided, and the High Court expressly adopted those authorities.

57    To the extent that passages in [70] might be taken to indicate a broader view of context as part of the ratio decidendi, the aspects of packaging on the Self Care product that were emphasised in that paragraph are concerned with the proximity of the impugned PROTOX mark to the registered BOTOX® mark. That is not the situation in the present case, which may be distinguished from the conclusions reached in Self Care for that reason.

58    Accordingly, I do not consider that the decision of the High Court in Self Care leads to the conclusion for which Hungry Jack’s contends.

59    I note that in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd [2023] FCA 482, Jackman J addressed the interpretation of Self Care. For the reasons set out above, I respectfully agree with his Honour’s observations at [56] – [59].

3.3    The use of BIG JACK and MEGA JACK

60    Hungry Jack’s accepts that since March 2020 it has promoted and offered for sale hamburgers under and by reference to the words BIG JACK and at about the same time started to use the words MEGA JACK in relation to a different hamburger offering. Examples of such use are set out in the evidence and appear in similar forms on the Hungry Jack’s website, in print advertising, social media platforms and television advertising:

61    The BIG JACK and MEGA JACK marks have been applied in Hungry Jack’s quick service restaurants. The meals offered at Hungry Jack’s outlets are comparatively low cost and service at physical outlets is swift. The purchaser selects the meal or menu item of interest and orders it at the counter. The meal is likely to be eaten more or less immediately.

62    The evidence indicates that Hungry Jack’s has operated such restaurants in Australia since 1971 under the brand name HUNGRY JACK’S and that there are over 400 such restaurants in Australia. The Hungry Jack’s quick service restaurants are located within food courts in shopping centres, in drive-through sites which offer eat in or take away drive-through facilities, in stand-alone stores which offer sit down service only and in co-branded sites, which are located within premises that have other branding, such as service stations (including BP, United Ampol and Shell service stations).

63    An example of a food court store frontage is set out below:

64    An example of the shop frontage of a drive-through store is as follows:

65    An example of a co-branded store is as follows:

66    Hungry Jack’s products can also be purchased through the Hungry Jack’s website and app. They can also be purchased using third party apps such as Uber Eats, Menulog and Deliveroo. Included within the options are the hamburgers identified by reference to the words BIG JACK and MEGA JACK. A typical version of the home page for the Hungry Jack’s website is as follows:

67    In the case of the UberEats, Menulog and Deliveroo apps the user must first select from a list of cuisines and restaurants and then select Hungry Jack’s as an option. An example is as follows:

68    Consumers then click through various menu options presented. Below, on the left, is an example of what appears on the Hungry Jack’s website. On the right is an example of an available selection from a third-party app, being an UberEats menu:

69    Various prompts are then followed to complete the transaction. Similar processes, and similar displays, appear in the various other online purchasing options available.

70    Whether a consumer acquires hamburgers from a restaurant (in person) or online, they are all supplied in cooked form.

3.4    The evidence of Mr Baird

71    The evidence of Mr Baird was relied upon by McDonald’s to support the case that Hungry Jack’s deliberately adopted the impugned trade marks for the purpose of appropriating McDonald’s’ reputation.

72    In his affidavit, Mr Baird gave evidence that he and those reporting to him in the Hungry Jack’s marketing team decided to offer a club-style sandwich – being a hamburger with an extra layer of bread to separate two hamburger patties – as a direct competitor product to McDonald’s’ BIG MAC, which would meet a gap in Hungry Jack’s offering. In around July 2019, he instructed Andrew McCallum, Marketing Director, and Andrew Cheong, New Product Development Manager, to develop a product in a trial market which was to adopt a 5”, club-style sandwich form, being a 5” club BIG KING hamburger. The BIG KING is a hamburger sold in Burger King outlets overseas, but not available in Australia. He gave evidence that adopting the club style made the product more distinctive within the Hungry Jack’s product range whilst the addition of two patties sandwiched between three pieces of bread mirrored other ingredients and the design of the Big King hamburger offered internationally, namely cheese melted on top of the patties, lettuce, pickles, sliced onions and a new sauce called “King Sauce”.

73    Mr Baird gave evidence that he did not consider that any of the trade marks available to Hungry Jack’s in Australia were suitable, and the name BIG KING as used elsewhere internationally was not, as he understood it, relevant in Australia where the HUNGRY JACK’S brand, not BURGER KING, is used. Instead, he considered that the name JACK or JACK’S would be suitable, as it would in part be a reference to the corporate branding and the name of the Hungry Jack’s founder, Jack Cowan and in part a flow-on from the chain of cafés that Hungry Jack’s had launched (attached to Hungry Jack’s restaurants) called JACK’S CAFÉ, of which there are now about 246 outlets (with 200 more planned). He gave evidence of other references to “Jack’s” or “Jacks” in limited promotional offers and internal training.

74    In his affidavit Mr Baird said:

I was aware that there was an element of cheekiness in naming the product BIG JACK, due to the rhyming of “Jack” and “Mac” in BIG MAC. I was aware that the name would likely be perceived as a deliberate taunt of McDonald’s. The use of cheeky “taunts” is common in overseas markets where McDonald’s and Burger King compete… Given the well-established level of competition between Hungry Jack’s and McDonald’s, together with the use of distinctive branding by both outlets, the separate trade channels operated by each of them, the common use of BIG and MEGA (as discussed below) together with Hungry Jack’s association with the name Jack, I did not consider there to be any risk that consumers would confuse the trade source of the Big Jack Hamburger with the source of the Big Mac Hamburger.

75    Prior to the launch of the BIG JACK hamburger, Hungry Jack’s secured a trade mark registration for the BIG JACK trade mark. Mr Baird noted that McDonald’s did not oppose that registration.

76    In relation to the MEGA JACK, as part of the same limited time offering of the BIG JACK, Hungry Jack’s trialled a larger sized variant of the BIG JACK with two larger (4oz) meat patties and a bigger (5”) bun which was named MEGA JACK. Hungry Jack’s had previously used the word MEGA for its two products MEGA MILKSHAKES and MEGA MEALS for promotional deals. Mr Baird gave evidence that the MEGA JACK hamburger was designed to provide a much bigger burger alternative to the BIG JACK hamburger. At that time, he was not aware that McDonald’s had registered the trade mark MEGA MAC and had never heard of a product of that name being sold or promoted by McDonald’s. Indeed, he first learned of that trade mark when Hungry Jack’s received a letter before action from Spruson & Ferguson dated 21 August 2020.

77    In cross examination, Mr Baird accepted that in adopting a club style hamburger form, Hungry Jack’s was following a BURGER KING strategy, in terms of how BURGER KING intentionally competes against the BIG MAC by having a type of hamburger that is similar to the BIG MAC. He gave evidence that this choice of name was part of the naming convention, following the international use of BIG KING, but adapting it for the Australian market where there was no recognition of KING, but recognition of HUNGRY JACK’S. He resisted the proposition that the name BIG JACK was chosen because of its similarity with BIG MAC, instead saying that it was coincidental that the names were similar (particularly in that they rhyme) and that the choice of JACK came about because the word JACK is a “property” of Hungry Jack’s. I take this to mean that as far as Hungry Jack’s is concerned, JACK is part of its recognised brand, which I find is plainly correct. Having said that, Mr Baird readily accepted that there are “obvious links between the two name[s], you can’t move away from that”, a point that he and other decision makers at Hungry Jack’s recognised. It was this that he considered gave the choice “an element of cheekiness”.

78    As developed in cross examination, Mr Baird’s evidence was:

And so the element of cheekiness was something that you were aware of at the time you were considering what to call the Big Jack?---Correct.

And it was something that you took into account in naming the product Big Jack, wasn’t it?---Moving – as we moved forward, correct.

And the cheekiness that you refer to in paragraph 40 was entirely intentional, wasn’t it, Mr Baird?---I think there was – I think there – we had gone through due process and we were looking for how we could actually leverage the name. And, as I said, it was – there was obviously – we understood that there would be some – that there would be that element of cheekiness between the two names.

So the element of cheekiness was deliberate in your choice, so far as you were concerned - - -?---Correct.

- - - of the name Big Jack, correct?---Correct.

And you also intended that consumers, seeing the name Big Jack or encountering it as the name of a hamburger, would call to mind the Big Mac because of that similarity, correct?---Correct.

79    Mr Baird did not accept that the absence of use of the apostrophe “s” at the end of JACK in the BIG JACK mark made any relevant difference, because the “naming convention” (and, I interpolate, the “leverage” mentioned in the above passage) was based on what he considered to be Hungry Jack’s “ownership” of the word “Jack”. He resisted the proposition that Hungry Jack’s wanted to leverage off consumer recognition of the BIG MAC brand, giving evidence that it was not his intention to do so, saying “[w]e wanted to ensure that we were trying to get people to buy the BIG JACK product”. Mr Baird accepted that he and those at Hungry Jack’s wanted there to be a recollection of the BIG MAC brand when they saw BIG JACK.

80    Mr Baird confirmed in his oral evidence that his view that there would be no consumer confusion as a result of the choice of BIG JACK was for several reasons: that there was an established level of competition between McDonald’s and Hungry Jack’s; that both businesses use distinctive branding, such as their logos and names; and the differences in the word marks.

81    Mr Baird was directly challenged on the question of intention as follows:

Now, Mr Baird, in proceeding with the launch of the product using the name Big Jack you knew, didn’t you, that there was a possibility that some consumers who encountered the words Big Jack as the name of hamburger might wonder whether it came from the source as the Big Mac?---No.

…

In particular, you knew that there was a possibility that consumers of that kind, that is, consumers who were only occasional consumers of QSR products, and had a limited familiarity with the Big Mac, might be cause to wonder whether a hamburger called the Big Jack came from the same source as the Big Mac?---In – I can’t see how that’s – how that’s conceivable.

And I suggest that in adopting the name Big Jack, so far as you were concerned, you intended to take advantage of that possibility in using that name for a Hungry Jack’s hamburger?---No. Incorrect. The research, as part of the discovery documents, showed that switchers, who were – who we were actually targeting as the core target – and there’s a reference there – were looking for variety, and variety and adding to our burger range would actually attract those consumers.

82    I consider that Mr Baird gave honest evidence and that the answers given in this passage represent his genuinely held view.

3.5    The deceptive similarity arguments

83    McDonald’s submits: that there are significant visual and aural similarities between the BIG MAC and BIG JACK; that the “idea” conveyed by the respective marks is similar with the word BIG being coupled with the name of a person with the latter being strong and colloquial or familiar names leading to the idea being that it is a large burger, perhaps personified or referable to a person, citing Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; (1952) 86 CLR 536 at 539; and that the “surrounding circumstances” which are relevant are that the goods are ready-to-eat and relatively low-priced food and that this increases the prospect that consumers will not subject the marks to detailed analysis and may be caused to wonder as to their origin by reason of their imperfect recollection. McDonald’s submits that there is at least a real, tangible danger of confusion, or of consumers being caused to wonder whether it might not be the case that the two products come from the same source, in the surrounding circumstances that the authorities permit to be taken into account in the infringement analysis, emphasising that the authorities do not permit consideration to be taken of Hungry Jack’s’ use of its HUNGRY JACK’S house mark and other distinguishing indicia.

84    McDonald’s submits that the question of deceptive similarity of MEGA JACK when compared to MEGA MAC should be determined in a manner analogous to the assessment of the BIG MAC and BIG JACK marks. It submits that the visual and oral similarities are striking, with the two marks again including an identical first word and otherwise being very similar phonetically and conveying a similar overall impression.

85    McDonald’s submits that the evidence establishes that Hungry Jack’s deliberately chose a visually and phonetically similar trade mark, BIG JACK, in respect of a “copycat” product which directly competes with its BIG MAC hamburger. It submits that this evinces an intention to adopt a significant part of the BIG MAC trade mark to take advantage of the similarity in the minds of consumers. It emphasises evidence given by Mr Baird to the effect that the BIG JACK hamburger was specifically designed to target and compete with the BIG MAC hamburger and that Hungry Jack’s went to considerable lengths to provide a burger with a similar “build” and similar taste profile to the BIG MAC. It submits that the choice of name was with full knowledge of the similarity of BIG JACK to BIG MAC and that this was deliberate, Mr Baird acknowledging that there was an “element of cheekiness” in choosing BIG JACK, knowing that that Hungry Jack’s could “leverage the name” and consumers’ recollection of the BIG MAC brand by using the similar name for a hamburger product.

86    McDonald’s submits that Hungry Jack’s failed to call evidence from the persons actually responsible for the decision to use the BIG JACK trade mark, as the decision to proceed with the BIG JACK hamburger (and name) was made by the board of directors of Hungry Jack’s. It submits that an inference may be drawn that evidence of Mr Jack Cowin or the other members of the board would not have assisted Hungry Jack’s; citing, inter alia, Jones v Dunkel [1959] HCA 9; (1959) 101 CLR 298 at 308, 312, 320-321. It submits that a similar inference may be drawn from the failure of Hungry Jack’s to call Andrew McCallum, Marketing Director, to give evidence.

87    McDonald’s submits that the suggestion that the name BIG JACK was part of an established “naming convention” should be rejected, and that the evidence showed that Hungry Jack’s uses “JACK’S” in its product names and promotions, not the word JACK simpliciter. In this regard, McDonald’s submits that the fact that the founder of Hungry Jack’s is a person whose forename is “Jack” is irrelevant from a branding perspective. Finally, McDonald’s submits that the evidence of Mr Baird in his affidavit to the effect that he did not consider there to be any risk that consumers would confuse the trade source of the BIG JACK hamburger with the BIG MAC hamburger is not to the point, because the reason for that view included his knowledge of the well-established level of competition between the parties and the distinctive use of branding by both outlets which were the main reasons why he thought that there would be no confusion. Those matters, McDonald’s submits, are irrelevant to the deceptive similarity enquiry, which depends fundamentally on a comparison between the trade marks, without regard to such considerations.

88    Hungry Jack’s disputes that the marks are visually and aurally similar and contends that aural similarities are less important in the present case where goods are bought in a manner that relies on predominantly visual cues, whether in takeaway restaurants or online. It submits that the ideas of the marks differ with BIG being a classically descriptive word which is common to the trade and is accordingly to be afforded less weight; citing Cooper Engineering at 539 (Dixon, Williams and Kitto J) and Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83; (2017) 251 FCR 379 at [52] (Greenwood, Jagot and Beach JJ). Hungry Jack’s emphasises the differences between MAC and JACK and contests that the idea of each mark is similar and points to differences between the “look” of each mark.

89    Hungry Jack’s submits that as consumers can only purchase products from a dedicated site, whether physical or online, the context tells away from the likelihood of deception or confusion. Hungry Jack’s submits, relying on aspects of Self Care to which I have referred, that there is no likelihood that a consumer would be caused to wonder whether the goods sold in an Hungry Jack’s outlet by reference to BIG JACK would come from the same source as a BIG MAC because of the consistent use of the Hungry Jack’s branding. Hungry Jack’s submits that it is artificial to approach the question of likelihood of deception and confusion absent consideration of the fact that the marks in the present case will be used in conjunction with other trade marks (for instance, the MCDONALD’S mark, the golden arches or other trade livery on the one hand and the BURGER KING trade mark and livery on the other) by which the different sources of food will be readily identified. The quick service restaurants that are the outlets of the food are “single source” places, where there is no real prospect that a consumer will be caused to wonder.

90    Hungry Jack’s submits that it is relevant that McDonald’s has put forward no evidence of actual deception or confusion on the part of consumers and disputes that McDonald’s has established that there was a relevant intention on the part of Hungry Jack’s in the sense contemplated in Australian Woollen Mills at 657.

91    In relation to intention, Hungry Jack’s submits that McDonald’s has failed to establish that the impugned marks were fashioned “as an implement or weapon for the purpose of misleading customers” as required by Australian Woollen Mills at 657. It submits that McDonald’s has no monopoly on a particular form of hamburger build or the tagline used and that Hungry Jack’s’ decision to introduce a club-style burger was to encourage consumers directly to compare the BIG JACK with the BIG MAC, not to confuse customers as to the origin of the BIG JACK burger, as Mr Baird explained in his evidence. Hungry Jack’s submits that Mr Baird gave honest evidence of his view that the BIG JACK mark would not cause confusion, which was not challenged in cross-examination and should be accepted. It submits that even if the full get-up of Hungry Jack’s restaurants, website and advertising is not relevant for the s 10 comparison, that get-up makes it clear that the source of goods is different from McDonald’s. In such a circumstance in the real world, the choice of name cannot rationally have been intended to confuse or deceive, as Mr Baird’s evidence demonstrates.

92    In relation to the alleged infringement of the MEGA MAC mark by MEGA JACK, Hungry Jack’s, like McDonald’s, argues that by analogy the same arguments apply as for the BIG MAC and BIG JACK marks.

3.6    Consideration of deceptive similarity

3.6.1    Introduction

93    The trade mark registrations for BIG MAC and MEGA MAC relevantly concern hamburgers. In the present case, the notional buyer is a person interested in acquiring a product from a quick service restaurant, purchased in store, from a drive-through outlet, or online. In such quick service restaurants, the hamburgers may be taken to be lower cost items that are cooked and sold for the convenience of consumers who are either cost conscious or short of time or both. As Mr Baird said in his evidence, the market for quick service hamburgers is driven by “convenience, taste and value”. It may also be taken that because people will eat hamburgers, they are likely to pay some attention to make sure that they get the right product. Unlike other relatively inexpensive items, persons consuming food will want to know what they are getting. They are not likely to be particularly careless or inattentive. The goods the subject of the registration appeal to a broad range of consumers, from the youthful to the elderly and everyone in-between. They are general consumer goods. The evidence indicates that Hungry Jack’s target market is people aged between 18 to 39 years of age and includes people who prefer Hungry Jack’s products (“preferers”), those who swap between brands (“switchers”) and those who may occasionally visit a quick service restaurant (“light users”). The evidence indicates that in 2020 the price of a BIG JACK hamburger was about $8 and a BIG MAC was around $7.

94    The decision in Self Care confirms that the reputation that McDonald’s has garnered in its trade marks is irrelevant as is any reputation that Hungry Jack’s has in its trade marks. This is important. It means the notional consumer would not approach either of the trade marks with preconceptions based on their experience with either McDonald’s or Hungry Jack’s or any of their branding. Each mark must be considered afresh, shorn of knowledge of the reputation of both. There is, of course, a degree of artificiality in the approach, but that is for the good reasons set out in the case law.

3.6.2    BIG JACK and BIG MAC

95    I start with the registered trade mark BIG MAC, considered by the hypothetical purchaser of hamburgers who has never heard of the famous chain of quick service restaurants called MCDONALD’S or anything related to that chain.

96    The trade mark is of two words of one syllable each. The word BIG is descriptive. A person unfamiliar with McDonald’s and any reputation residing in it would understand the word to convey something about the product promoted for sale, namely, having regard to the relevant registration, a hamburger that is large (big) as opposed to a small one. The word BIG may be regarded as both laudatory as well as descriptive, it being perhaps a good thing to have a larger hamburger. One may take judicial notice that it is a common adjective. Unsurprisingly, the evidence indicates that other sellers of hamburgers and fast food deploy the word BIG in association with their hamburgers and other products from quick service restaurants. Examples include BIG CARL, BIG QUEENSLANDER, BIG BUNZ, BIG BOY and THE BIG GRILL.

97    MAC is a one syllable word. It has a soft beginning (“m” sound) and a hard end, most likely pronounced “ack”.

98    The Macquarie Dictionary indicates that MAC may mean a prefix found in many family names of Irish or Scottish Gaelic origin, a colloquial abbreviation of “mackintosh” which is a type of raincoat, or, in a chiefly United States colloquial usage, a man (Macquarie Dictionary, 3rd edition, 1997). McDonald’s submits that many would see the word as the familiar or colloquial abbreviation of a person’s name. However, that is by no means clear. I consider it more likely that to the notional consumer, “Mac” may be understood to be a coined or unusual forename or surname, which may be Scottish or Irish, an abbreviation of a longer name or a word conveying no particular meaning, noting that for present purposes one must ignore the reputation of McDonald’s and the prospect that consumers would view it to be an abbreviation of “McDonald’s”.

99    Considering BIG MAC as a whole, it is a short, snappy, two-word mark, the idea of which draws attention to something that is large, namely a large “Mac”, “Mac” being the name of the product. The words together would be separately pronounced and read with the strong “b” providing a point of contrast to the softer “m” of the second word.

100    Turning to the BIG JACK mark, the word “big” will of course have the same descriptive and laudatory connotations. The word “big” will be understood to identify a characteristic of the word that follows.

101    Unlike MAC, the word JACK is an easily recognised forename and would be understood as such by most consumers. It could also have other meanings which are unlikely to be considered. Dictionary evidence indicates that it could refer to a tool for lifting things (such as a car to repair a tyre), the name of a playing card, a game or an ensign, as in “Union Jack”. More likely, consumers will consider BIG JACK to be some sort of personified hamburger that is large.

102    The word Jack has a strong “j” sound and finishes with a hard “ack”.

103    BIG JACK must be compared with BIG MAC. This comparison is not side by side but based on the typical consumer’s imperfect recollection. As I have noted, consumers of hamburgers within the class of goods of McDonald’s trade mark registration are likely to pay reasonable attention to a sign that denotes what it is that they will be eating. At a restaurant or drive-through they may order the goods orally. Online, they will order by reference to the name and description of the product, most likely by clicking on an option.

104    In so doing, in my view, the notional consumer will recognise that BIG is a descriptive and possibly laudatory term that is commonly used and likely give this lesser emphasis as a point of recollection than the word MAC. It is likely that the imperfect recollection of the consumer will call the word MAC to mind readily and identify it as an important and distinctive part of the mark. They will do the same when they see BIG JACK. Again, they are less likely to consider the word BIG as a point of distinction. They are likely to note several similarities: both contain two short monosyllabic words, both begin with BIG, both finish with an “ack” sound.

105    However, allowing for imperfect recollection, I do not think it likely that the typical consumers will confuse JACK for MAC or BIG JACK for BIG MAC or be caused to wonder whether hamburger products sold under and by reference to BIG JACK come from the same source or are affiliated with the trader who sells the BIG MAC. Jack is a very recognisable forename that will be known by most, if not all consumers. MAC is an unusual name or abbreviation. Although both are BIG, the idea conveyed by JACK and MAC is different. The words look and sound different, the “j” being quite distinctive of “m” both visually and phonetically. Whilst there is a similar rhyme to the conclusion of the two marks when said aloud, there is a phonetic difference between the spoken aspect of “mac” and “Jack”. In my view, people are likely to be attuned to noticing differences in forenames (Harry is not Barry, Pat is not Matt, Ryan is not Brian, Ronald is not Donald) and they are more likely to remember the different look and sound of the words MAC and JACK as points of distinction.

106    Taken together, these matters lead me to the conclusion that BIG JACK is not deceptively similar to BIG MAC.

107    Further, whilst neither is likely to be determinative, I separately note that McDonald’s has adduced no evidence of deception or confusion. Nor, as I note in a little detail below, am I persuaded that McDonald’s has established that Hungry Jack’s selected the BIG JACK mark for the purpose of misleading customers.

108    In reaching this conclusion, and contrary to the submission of Hungry Jack’s, I have not taken into account the use of any particular livery or trade marks in conjunction with the BIG JACK mark. For the reasons that I have set out in section 3.2 above, in my view the decision in Self Care does not mandate that approach. If I am incorrect in that conclusion and, contrary to my view, one is obliged to take into account the fact that the BIG JACK hamburger is sold exclusively at Hungry Jack’s outlets which use Hungry Jack’s trade livery and the HUNGRY JACK’S trade mark, my conclusion would be further reinforced. That is because the evidence indicates that the vast preponderance of the use of the BIG JACK mark is in conjunction with that trade livery and signage, all of which would indicate to a consumer that the trade origin of the hamburger being sold is Hungry Jack’s.

3.6.3    Intention

109    In Australian Woollen Mills at 657, the Court noted that in considering how prospective buyers will be impressed by a given word, the judgment of traders is not to be lightly rejected, and when a trader fashions an implement or weapon for the purpose of misleading potential customers, they at least provide a reliable and expert opinion on the question of whether what they have done is in fact likely to deceive. The rationale for this is based on the supposition that a trader will be well placed, as an expert in the field, to have an opinion as to the likely reaction of consumers. It will be sufficient for the trader to intend to adopt some or all of a trade mark so that consumers may be caused to wonder that one is the trade source of the other; Hashtag Burgers at [103], [104].

110    In the present case, I am not persuaded that Hungry Jack’s fashioned the name BIG JACK for the purpose of misleading consumers as required.

111    First, it is credible that BIG JACK was selected for the purpose of drawing attention to the JACK component of HUNGRY JACK’S, which is the widely promoted name of the respondent’s business. As Mr Baird accepted, the addition of “BIG” to JACK was likely to lead consumers to draw comparisons with the BIG MAC, but that was a conscious comparison of one product with another from a different trade source. I accept that in the process of decision-making, Mr Baird did not consider that a consumer would think that a BIG JACK was, or may be, a BIG MAC or that a BIG JACK could be purchased from McDonald’s. I do not consider that the absence of the apostrophe and “s” is indicative of purpose, but rather a grammatical choice.

112    Secondly, the question of whether a trader fashions a weapon for the purpose of misleading potential customers is a question of fact based on the workings of the mind of the trader in question. This is perhaps a rare case where both parties are able to claim a significant reputation in their businesses. McDonald’s in (at least) the names BIG MAC and MCDONALD’S and Hungry Jack’s (at least) in the name HUNGRY JACK’S. In these circumstances, it is unrealistic to postulate the highly theoretical circumstance, of the type that trade mark lawyers routinely engage, but normal people do not, where neither trader has any reputation. Mr Baird’s view that there would be no confusion was in part because it was inconceivable to him that a consumer who saw an advertisement or sought to purchase a BIG JACK hamburger in a Hungry Jack’s outlet or online could miss the fact that the trade origin of the product was Hungry Jack’s based on the livery of the store and/or the use of Hungry Jack’s’ other trade marks (including the name HUNGRY JACKS) and that the trade origin was not the well-known McDonald’s, with its quite different trade livery and trade marks. Based on the evidence in this case, that was an entirely credible view.

113    Of course, it would be unrealistic for Mr Baird to have formed any intention absent these matters. The circumstances of this case mean that the likelihood of obtaining evidence of the sort contemplated in Australian Woollen Mills is low. It is not possible to postulate what Mr Baird might have thought, absent knowledge of the reputation of McDonald’s and Hungry Jack’s, about the impression BIG JACK might have on persons with an imperfect recollection of BIG MAC. While reputation is not relevant to the assessment of whether two marks are deceptively similar, a trader’s knowledge or perception of reputation may be relevant to the assessment of whether they had an intention to mislead or deceive in using a particular trade mark. Here, Mr Baird’s knowledge or perception led him to the view that it was inconceivable that consumers would be confused at all. In such circumstances, I am not prepared to draw any inferences as to what Mr Baird’s state of mind may have been had he not taken reputation into account. Nor, quite properly, have I been asked to do so.

114    Thirdly, the fact that Hungry Jack’s set out to compete with the BIG MAC by producing a similar club sandwich style hamburger that seeks to emulate the taste of the BIG MAC, including by use of a particular tagline, does not of itself aid McDonald’s argument unless there was an intention to confuse consumers by the choice of the impugned trade mark.

115    Fourthly, I accept Mr Baird’s evidence that Hungry Jack’s was content for there to be an element of what he termed cheekiness in adopting the BIG JACK name. That evidence was reflected in Hungry Jack’s internal documents, which indicated a desire on the part of Hungry Jack’s to invite the comparison. As one internal document said:

It will be very hard for customers to resist the temptation to compare…

The Big Jack naming says it all and gets attention. Its cheeky [sic] and will generate trial through curiosity especially with brand switchers and lighter users generating trial. It will also generate PR as its news worthy…thus further amplifying media.

116    In other words, as Mr Baird said, Hungry Jack’s wished to compete with McDonald’s’ BIG MAC for the sale of a similar hamburger, and the use of BIG JACK was likely to draw attention to that fact for consumers familiar with the McDonald’s product. Both trade marks use the word “big” and have other similarities as noted above. However, the desire was to compete by a choice of name that had echoes of the BIG MAC name but was nonetheless recognisably different to it. I consider that the purpose was not to mislead but to invite a comparison and contrast. Other internal documents reflect that purpose.

117    Fifthly, I am not prepared to draw the inferences in accordance with the principles in Jones at 308, 312, 320 – 321 sought by McDonald’s. Mr Baird was the Chief Marketing Officer of Hungry Jack’s at the time. Although the ultimate decision as to whether to proceed was up to the Board of Directors, it is apparent that it was his reasoning that led to the point of adoption of the BIG JACK name upon recommendation being made to the board. Although the board of directors of Hungry Jack’s made the final decision, he was the person responsible for developing and implementing the strategy adopted by the Board. In my view, his reasoning was credible. I am not satisfied from the failure to call Mr Cowin or Mr McCallum that it may be inferred an alternative version of facts, namely that Hungry Jack’s selected BIG JACK for the purpose of misleading potential consumers, may be drawn.

3.6.4    MEGA JACK and MEGA MAC

118    The MEGA MAC mark must also be considered by the hypothetical consumer who has never heard of McDonald’s. It is of two words, the first of two syllables, the second of one. The commencement of each word provides a point of emphasis with the repeated “m” sound.

119    The word “mega” is descriptive. By its Macquarie Dictionary definition (3rd ed, 1997) it may mean a prefix denoting 106 of a given unit, as in megawatt; a prefix meaning ‘great’ or “huge” as in megalith; or colloquially to mean “to a very great degree” as in megatrendy. It is most likely that a consumer would understand the word to convey the second or third of these meanings, being something about the product promoted for sale, namely, a hamburger that is huge or giant (mega) as opposed to one that is smaller or simply large. As with “big”, it may be regarded to be laudatory as well as a descriptive term. In my view, it has a common adjectival meaning, whether used as a prefix or as separate words. The evidence indicates that the word “mega” has been used by a number of sellers of hamburgers and fast food to denote their products, including MEGA BURGER, MEGA BURGERS and BELLA’S MEGA BREKKY BURGER.

120    I have described aspects of the word MAC above at [98].

121    I have also reviewed the characteristics and likely meaning to be attributed to JACK above at [101].

122    Taken together, the ordinary consumer is likely to understand MEGA JACK to be a huge or giant Jack, a personified hamburger.

123    MEGA JACK must be compared with MEGA MAC. Again, this comparison is not side by side but based on the notional consumer’s imperfect recollection having regard to the likely range of circumstances of a notional sale.

124    In so doing, in my view, the notional consumer will recognise that MEGA is a descriptive and possibly laudatory term and is likely to give this lesser emphasis as a point of recollection than the word MAC. It is likely that the imperfect recollection of the consumer will call the word MAC to mind more readily. They will observe the words MEGA JACK in the notional environment of an acquisition in the context of a quick service restaurant, drive-through or online purchase. Again, they are less likely to consider the word MEGA as a point of distinction. Allowing for imperfect recollection, I do not think it likely that they will confuse JACK for MAC or MEGA JACK for MEGA MAC or be caused to wonder whether hamburger products sold under and by reference to MEGA JACK come from the same source or are affiliated with the trader who sells the MEGA MAC. As I have noted, JACK is a recognisable forename that will be known by most, if not all consumers. The words look and sound different, the “j” being quite distinctive of “m” both visually and phonetically. Whilst there is a similar sound to the conclusion of the two marks when said aloud, there is a phonetic difference between the spoken aspect of MAC and JACK. Furthermore, the words MEGA JACK lack the repetition of the “m” sound that the words “MEGA MAC” provide, which provides a further point of aural difference. Whilst there are similarities, in my view, people are likely to be attuned to noticing differences in forenames and are more likely to remember the opening sound of the words MAC and JACK as points of distinction. To many, the idea conveyed by the two marks will be somewhat different. If they read or heard MEGA JACK and imperfectly recalled the MEGA MAC, the sense of a different name would be conveyed.

125    Whilst neither is likely to be determinative, I separately note that McDonald’s has adduced no evidence of deception or confusion. In closing submissions, McDonald’s did not appear to contend that Hungry Jack’s intentionally adopted the MEGA JACK mark deliberately and knowingly for the purpose of promoting a connection between the marks. To the extent that McDonald’s does rely on the intention ground as pleaded, that argument does not survive Mr Baird’s unchallenged evidence that at the time that Hungry Jack’s selected the name for use he was unaware that McDonald’s had ever sold or used the name MEGA MAC. No evidence otherwise suggests knowledge within Hungry Jack’s of the MEGA MAC mark.

126    Taken together, these matters lead me to the conclusion that MEGA JACK is not deceptively similar to MEGA MAC.

127    As noted in [108] above, if I am incorrect in my analysis of Self Care and one is obliged to take into account the whole of the actual use by Hungry Jack’s of its packaging, signage and trade livery, my conclusion would be further reinforced.

4.    THE VALIDITY CHALLENGE TO THE BIG JACK MARK

4.1    Introduction

128    McDonald’s relies on three grounds of cancellation of the BIG JACK mark pursuant to s 88(1)(a) and 88(2)(a), and in the alternative s 88(2)(c), of the Trade Marks Act.

129    First, pursuant to s 44(1), that before the priority date for the BIG JACK mark, McDonald’s’ BIG MAC marks had been registered in respect of similar goods and the BIG JACK mark is deceptively similar to the BIG MAC mark. The outcome of this ground turns on my decision that BIG JACK is not deceptively similar to BIG MAC, as I explain further below.

130    Secondly, pursuant to s 60, that before the priority date for the BIG JACK mark, the BIG MAC mark had acquired a reputation in Australia and because of that reputation the use of the BIG JACK mark would be likely to deceive or cause confusion.

131    Thirdly, pursuant to s 88(1)(a) and (2)(c), because of the circumstances applying at the time of the application for rectification (being 28 August 2020), the use of the BIG JACK mark is likely to deceive or cause confusion.

132    McDonald’s pleaded a further ground based on s 62A (application made in bad faith) in its statement of claim but indicated during the course of closing submissions that this ground was abandoned.

133    Section 88(1) provides that only an “aggrieved person” or the Registrar of Trade Marks may apply for an order for the rectification of the Register. In its defence, Hungry Jack’s does not admit that McDonald’s is relevantly aggrieved. However, because, first, Hungry Jack’s is plainly a trade rival to McDonald’s and, secondly, Hungry Jack’s relies on the terms of s 122(1)(e) in its defence to the infringement suit for the purpose of permitting Hungry Jack’s to rely on the impugned marks in a competing market, I am satisfied that McDonald’s is an aggrieved person; Health World Ltd v Shin-Sun Australia [2010] HCA 13; (2010) 240 CLR 590 at [43]–[45].

4.2    The section 44 challenge

134    Section 44(1) provides:

Identical etc. trade marks

(1)    Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

(a)    the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i)    a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)     a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)    the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

135    For present purposes, the establishment of this ground requires first that the BIG JACK mark be found to be deceptively similar to the BIG MAC mark and secondly that the BIG JACK application be registered in respect of similar goods to those in the BIG MAC registration. In its closing submissions, McDonald’s handed up a schedule indicating the goods that it contends are similar to those of its BIG MAC registrations. Hungry Jack’s advances no argument to contest the second proposition or respond to the table. It confined its submission to repetition of its argument that the two marks are not deceptively similar.

136    McDonald’s correctly points out that when testing the question of deceptive similarity pursuant to s 44(1), the inquiry concerns the notional use of the BIG JACK mark that may be made within the scope of the registration. In this regard it repeats its submission made in the context of the infringement debate that the particular or idiosyncratic circumstances surrounding Hungry Jack’s’ use are irrelevant. I have accepted that argument in the context of the infringement question. It leads to no different result in the present context. Nor do I consider that when one considers that the notional and fair use of the BIG JACK mark in the context of ephemera such as television or radio advertisements the outcome of the deceptive similarity question is any different. The result is that the s 44 ground has not been made out.

137    For completeness I note that the second requirement of s 44 – that the BIG MAC mark be registered in respect of similar goods or closely related services – has been met in relation to all goods the subject of the BIG JACK mark with the exception of the following, which McDonald’s accepts are not similar goods:

Vegetable salads; fruit salads;

Beverages made from cereals, chocolate, cocoa, coffee or tea, confectionery, prepared desserts (chocolate based); prepared desserts (confectionery); prepared desserts (pastries); flavoured toppings for desserts; ices.

138    Accordingly, were I to be incorrect in relation to the question of deceptive similarity, this ground would succeed in relation to all but the above products. However, for the reasons given above, McDonald’s’ challenge on this ground must fail.

4.3    The section 60 challenge

139    Section 60 provides:

Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)    another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)    because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

140    McDonald’s relies on its reputation in the BIG MAC trade marks in respect of the goods for which they are registered in classes 29 and 30 respectively. It contends that because of that reputation, a substantial number of persons seeking to acquire the goods in respect of which the BIG JACK trade mark is registered would be deceived into thinking, or would be caused to wonder, whether it might not be the case that the goods were those of McDonald’s or have some connection in trade with them. McDonald’s emphasises that this may be particularly the case for customers characterised by Mr Baird as “light users”, who infrequently purchase products of this kind, who only occasionally visit a quick service restaurant and who are less frequently exposed to such products and are less familiar with them than heavier users. McDonald’s also relies on its submissions as to deceptive similarity in the context of s 44.

141    Hungry Jack’s does not dispute that the BIG MAC mark had acquired a reputation by 14 November 2019, but submits that there must be a real tangible danger of deception or confusion among a significant or substantial number of consumers. It submits that consumers purchasing BIG JACK hamburgers from Hungry Jack’s restaurants would not be caused to wonder whether the hamburgers come from McDonald’s. In this regard, it observes the evidence that the BIG MAC has not changed over the course of 50 years of usage, either in name, build or method of operation. It submits that it is improbable that consumers would infer that hamburgers bearing the BIG JACK mark were in any way associated with it.

142    Section 60 was amended in 2006. Prior to then, it was necessary to show that the trade mark the subject of opposition was substantially identical or deceptively similar to the earlier mark that benefitted from the reputation. That is no longer a requirement. Instead, an opponent to registration (or, as here, party seeking revocation) must demonstrate that there was another trade mark which had acquired a reputation amongst a significant section of the public at the priority date, such that use of the opposed mark would be likely to deceive or cause confusion.

143    The question is purely one of prior reputation. Even if the conflicting marks are not deceptively similar, the s 60 objection may be established if the reputation of the first mark is such that use of the opposed mark is likely to result in a real risk of confusion in the trade mark sense. That is not to say that the question of the degree of similarity between the allegedly conflicting marks will be irrelevant. It is a material consideration. However, the standard set by s 60 focusses attention on the reputation of the first mark; see Qantas Airways Limited v Edwards [2016] FCA 729; (2016) 338 ALR 134 at [141] – [143] (Yates J); Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923; (2019) 370 ALR 140 at [83], [84] (O’Bryan J).

144    The standard of “confusion or deception” under s 60 is the same as under s 44(1) of the Trade Marks Act, namely, it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient; Qantas Airways at [130], [145].

145    McDonald’s has acquired a reputation and goodwill in the BIG MAC name in respect of hamburgers. The evidence of Mr Kenward addresses that reputation. It notes that BIG MAC hamburgers have been promoted and sold extensively in Australia since 1971 in association with the BIG MAC trade mark. Samples of point of sale, print and digital material promoting the BIG MAC hamburger are in evidence, as are details of confidential sale figures and advertising spend. They lead to a picture of an enormous reputation of McDonald’s in that trade mark. By the priority date of the BIG JACK mark, BIG MAC had been used continuously in Australia for almost 50 years without change.

146    The notional person for the purposes of s 60 will be someone who is assumed to have an awareness of the BIG MAC mark and with the content and extent of the reputation in it; Delfi Chocolate Manufacturing S.A. v Mars Australia Pty Ltd [2015] FCA 1065; (2015) 115 IPR 82 at [27] (Jessup J); Singtel Optus Pty Limited v Optum Inc [2018] FCA 575; (2018) 140 IPR 1 at [205] (Davies J).

147    I have in section 3.6.2 above identified the similarities and differences between the BIG MAC and the BIG JACK marks. In the present case, the notional person, familiar with the enormous reputation of BIG MAC, would be likely to remember the entirety of the BIG MAC mark and immediately perceive the differences between it and BIG JACK. I do not consider that the notional consumer would have cause to wonder whether products displayed and sold under the BIG JACK mark are from a common source with those displayed and sold under the BIG MAC mark. The differences between the marks and the strong reputation attaching to the BIG MAC mark in relation to hamburgers makes it most unlikely that consumers would be likely to be confused or deceived.

148    Accordingly, the s 60 ground is not made out.

4.4    The section 88 challenge

149    Section 88 relevantly provides:

Amendment or cancellation--other specified grounds

(1)    Subject to subsection (2) and section 89, a prescribed court may, on the application of an aggrieved person or the Registrar, order that the Register be rectified by:

(a)    cancelling the registration of a trade mark; or

(b)    removing or amending an entry wrongly made or remaining on the Register; or

(c)    entering any condition or limitation affecting the registration of a trade mark that ought to be entered.

(2)    An application may be made on any of the following grounds, and on no other grounds:

…

(c)    because of the circumstances applying at the time when the application for rectification is filed, the use of the trade mark is likely to deceive or cause confusion;

…

150    McDonald’s relies upon s 88(2)(c). It submits that for the same reasons as apply to the ground under s 60, the use of the BIG JACK mark as at the date of the commencement of the proceedings in October 2020 would be likely to deceive or cause confusion. Neither party submitted that the reputation in BIG MAC by this date was in any respect materially different to the reputation that applied as at the priority date of the BIG JACK mark. In those circumstances, the outcome of the s 88 challenge must be the same as the outcome of the s 60 challenge.

4.5    Conclusion in relation to the challenge to the BIG JACK registration

151    For the reasons set out in this section I have concluded that none of the three grounds for cancellation succeed. One consequence of this is that Hungry Jack’s has available to it a further defence to the infringement case advanced by McDonald’s based on s 122(1)(e) of the Trade Mark Act. However, having regard to my findings in relation to deceptive similarity, it is not necessary to consider this additional point.

5.    CROSS CLAIM FOR REMOVAL OF MEGA MAC

5.1    Introduction

152    Hungry Jack’s seeks an order directing the Registrar of Trade Marks to remove the MEGA MAC trade mark from the Register pursuant to s 92(4)(b) of the Trade Marks Act which relevantly provides:

(4)    An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:

    …

(b)    that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:

(i)    used the trade mark in Australia; or

(ii)    used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

153    It will be recalled that the MEGA MAC mark has a priority date of 7 February 2013 in respect of:

Edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar

154    Pursuant to directions made in the conduct of the proceedings, the parties filed a statement setting out agreement on the following matters:

(1)    The relevant non-use period is from 27 July 2017 until 27 July 2020;

(2)    The MEGA MAC mark has not been used during the non-use period in respect of the goods identified in italics above;

(3)    The issue before the Court is whether McDonald’s has demonstrated use or authorised use of the MEGA MAC mark in respect of hamburgers during the non-use period;

(4)    If it has so demonstrated use, then the relevant goods for which use will have been shown will be the goods identified in bold above;

(5)    If the Court determines that the MEGA MAC trade mark has been used during the non-use period in respect of the goods in bold, Hungry Jack’s accepts that the discretion under s 101(3) of the Trade Marks Act should be favourably exercised so as to permit not only edible sandwiches and meat sandwiches, but also “pork sandwiches, fish sandwiches and chicken sandwiches” to remain on the Register;

(6)    If the Court determines that the MEGA MAC trade mark has not been used during the non-use period in respect of the goods in bold, McDonald’s contends that the discretion under s 101(3) should be exercised to permit all of goods identified in italics above to remain on the Register.

155    Under s 100(1), the burden lies with the opponent (here, McDonald’s) to rebut the allegation made under s 92(4). A trade mark is used (or intended to be used) if it is used to indicate a connection in the course of trade between the goods and the person who applies it to the goods; Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited [1991] FCA 402; (1991) 30 FCR 326 (Lockhart J at 341, Burchett J at 342, Gummow J at 251); Shell Oil at 424-425 (per Kitto J, with whom Dixon CJ, Taylor J and Owen J separately agreed). One instance of bona fide use of the trade mark will be sufficient to defeat a non-use application; see Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; (2009) 176 FCR 300 at [126]; Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 107 FCR 166 at [14]; Unilever Aust Ltd v Karounos [2001] FCA 1132; (2001) 113 FCR 322 at [64].

156    The first issue is whether McDonald’s has established by evidence that it has used the MEGA MAC mark in relation to hamburgers during the non-use period. If so, then the goods within its registration of edible sandwiches and meat sandwiches will survive.

157    Although there is a separation of corporate entity between McD Asia (the owner of the trade mark and licensor) and McDonald’s Australia (the licensee), there is a relative unity of purpose between those entities such that evidence of use for either will suffice; Trident Seafoods Corp v Trident Foods Pty Ltd [2019] FCAFC 100; (2019) 143 IPR 1 at [44] – [52].

5.2    The evidence of use - hamburgers

158    Mr Kenward relevantly exhibited copies of emails sent within the non-use period.

159    The first is a thread dated 4 May 2018 which commences with an email from Elly Griffiths of McDonald’s to Kent Burgess of an organisation called GuihenJones, which appears to perform marketing services for McDonald’s. Ms Griffiths said:

Mount Druitt are going to be one of the stores coming onto the DDT Trial.

They flagged the fact they currently promote Double Up via LSM on their DDT DMBs.

Are you able to shoot over an example of what they currently have?

160    The term “LSM” apparently refers to “local store marketing”, “DDT” is a reference to “digital drive-through” and “DMB” refers to “digital menu boards”. Mr Kenward explained in his evidence that an example of LSM is where an individual store puts a request to McDonald’s Australia to feature Double the Taste Burgers. Mr Kenward gave evidence that “Double the Taste” is preapproved content that has been approved by him for use for local store marketing activity.

161    Mr Burgess then sent an email internal to GuihenJones (the address block is absent from the evidence) asking whether he could “get a screen grab of there [sic] drive thru?”. Kealan Clarke of GuihenJones responded to Mr Burgess a few minutes later, saying:

Attached is an example of the double the taste module on DDT its [sic] one of the most popular LSM items.

162    The image that accompanies the email is as follows:

163    It may be seen that it is an image of a menu board with the words “Double the Taste”. On the left-hand side are what appear to be doubled up hamburgers, the final of which appears to be a BIG MAC build with four, rather than two, meat patties. Beside it are the words MEGA MAC with the ® symbol, denoting a registered trade mark. There is no evidence that a copy of this image was sent to Ms Griffiths.

164    The second is an email from Shane Ronan of GuihenJones to Mr Burgess dated 1 November 2018 which says “[h]ere are [sic] a collection of screenshots of the DigCal content that has gone live this morning”. Three images of digital screens follow. The words “Thornleigh NSW – Switchboard” appear on the tab reference with a URL that contains the numbers 0235. The evidence of Ms Dhanju indicates that this is the store code for the McDonald’s Australia owned store located in Thornleigh.

165    The images include a menu identifying McDonald’s items, including a panel headed Double the Taste and including similar items to that depicted above, including a double sized BIG MAC with the words MEGA MAC next to it.

166    The third is an email dated 8 October 2018 sent from Andrea Tu, whose email signature indicates that she is the supervisor at the Ludmilla, Casuarina and Katherine franchised McDonald’s restaurants. The email asks permission to apply Double the Taste on the digital menu board “instead of family dinner box please. It’s the 5th one (very right-hand side one) at Front Counter menu board”.

167    The email then lists six store locations with code numbers next to them. The code numbers match those identified by Ms Dhanju as representing store codes for each of the Casuarina, Ludmilla, Palmerston, Coolalinga, Katherine and Johnston McDonald’s restaurants. One of the addressees of the email can be seen from franchise agreements in evidence to be a principal of the franchisee for five of the six stores listed.

168    The attached images depict part of a menu board in situ in a McDonald’s store. It includes a version of a Double the Taste panel, similar to that set out above, which includes the words MEGA MAC® in association with what appears to be a double sized BIG MAC.

169    Mr Kenward gives evidence that he recognised the artwork contained in these emails as content that he had approved as marketing director within his team at McDonald’s Australia. That evidence was not shaken in cross examination.

170    Furthermore, Ms Dhanju gives evidence that she has extracted figures from within the database used by McDonald’s by using the search term “Mega Mac”. She exhibits sales figures for each of the Thornleigh, Mt Druitt, Casuarina, Ludmilla, Palmerston, Coolalinga, Katherine and Johnston restaurants for the years 2014 to 2019. They indicate that non-trivial volumes of sales (details of which are confidential) are attributed to the item responsive to that search term.

171    Whilst Hungry Jack’s made criticisms of individual aspects of the evidence that I have summarised above, none of the points made is sufficient to dispel the impression created by this evidence collectively, which is that at least for the six identified stores, McDonald’s made substantial bona fide use of the MEGA MAC mark in connection with the double sized BIG MAC style hamburger to which I have referred.

172    In the result, I conclude that McDonald’s has discharged the onus upon it to establish that it has used the MEGA MAC mark in relation to hamburgers during the non-use period with the consequence that the registration in respect of edible sandwiches and meat sandwiches may remain on the Register.

5.3    Discretion in relation to non-hamburger goods

173    McDonald’s submits that, despite its admitted non-use in relation to the remaining goods of its registration, being pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar, the discretion under s 101(3) should be exercised in its favour to permit the mark to remain on the Register in respect of those goods. Hungry Jack’s opposes that course, except in relation to pork, fish and chicken sandwiches.

174    Section 101(3) provides:

101    Determination of opposed application—general

…

(3)     If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

175    In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128; (2021) 285 FCR 598 (Jagot, Nicholas and Burley JJ), the Full Court set out the following propositions relevant to the exercise of the discretion at [153]:

(1)    It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act: Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8; (2012) 202 FCR 490 at [35] (Jacobson, Yates and Katzmann JJ).

(2)    The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. This balance was articulated by the High Court in Campomar Sociedad, Limitada v Nike International Ltd [2000] HCA 12; (2000) 202 CLR 45 at [42] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ) and JT International at [30] (French CJ) and [68] (Gummow J); see also Austin Nichols at [36]-[37].

(3)    The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners: Austin Nichols at [38]. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner: Austin Nichols at [44]. This a reflection of the importance of the public interest in maintaining the integrity of the Register (Austin Nicholls at [38]) and so ensuring that trade marks that fail to comply with the conditions that underpin the entitlement to the statutory monopoly are removed from the Register.

(4)    The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark: Austin Nichols at [41].

(5)    The range of factors considered in the exercise of the discretion has included whether or not:

(a)    there has been abandonment of the mark;

(b)    the registered proprietor of the mark still has a residual reputation in the mark;

(c)    there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;

(d)    the applicant for removal had entered the market in knowledge of the registered mark;

(e)    the registered proprietors were aware of the applicant’s sales under the mark;

see Hermes Trade Mark [1982] RPC 425 (Falconer J) as followed in E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934; (2008) 77 IPR 69 (Flick J)) at [202]-[203].

(f)    A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services: Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; (2009) 176 FCR 300 at [173] (Bennett J); Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808; (2020) 158 IPR 9 at [271] (Burley J).

176    McDonald’s submits that the discretion should be exercised in favour of the remaining goods for the following reasons: (i) many of the goods are either ingredients in the MEGA MAC, are sold in conjunction with it or are sold separately in McDonald’s restaurants; (ii) McDonald’s Australia offers additional products with its hamburgers such as part of a value meal; (iii) as a result of the fact that that MEGA MAC is registered in respect of the remaining goods there is no “cluttering” of the Register; (iv) if the MEGA MAC mark is removed, because of the reputation that McDonald’s enjoys in MEGA MAC, a third party could not use that mark without engaging in misleading or deceptive conduct or otherwise running into objections for the registration of such a mark under s 44 of the Trade Marks Act as many of the goods would be consumed together; (v) other trade mark registrations for hamburgers, including the BIG JACK registration include a similar range of goods.

177    I am satisfied that pork sandwiches, fish sandwiches and chicken sandwiches should remain on the Register. Those goods would in any event fall within the description of “edible sandwiches” and are sufficiently similar to “hamburgers” – which are a type of sandwich – to warrant inclusion. Hungry Jack’s accepts that this would be so. It is also apparent that bread, which will include hamburger buns, is sufficiently close to hamburgers to warrant inclusion as a substantial component of a hamburger.

178    Turning to the other points raised by McDonald’s, I am not persuaded that the fact that some of the remaining goods might be ingredients of the MEGA MAC warrants the exercise of the discretion to permit them to remain. Whilst mustard, sauces, sugar and seasonings may qualify for that category, the connection between ingredients and the final cooked product available for sale is in my view remote in terms of trade channels and consumer perception. No evidence to which my attention was drawn suggests otherwise. For the balance of the remaining goods, there is no apparent connection.

179    Next, whilst the evidence does indicate that McDonald’s offers other products with its value meals, there is no suggestion that any of the remaining goods (leaving aside pork, fish and chicken sandwiches) have been, or are likely to be sold in such a collective way. The evidence indicates that the use of MEGA MAC is confined to occasional limited time offerings by specific restaurants. No evidence indicates what type of further use, if any, may be contemplated or that the mark will be applied in relation to any of the remaining goods. The fact that other trade mark registrations including hamburgers (or edible sandwiches) are for a broader range of goods cannot be of assistance to McDonald’s. Whether or not they are entitled to such registrations will depend on the particular circumstances and uses for each mark.

180    Nor do I accept that McDonald’s enjoys any material reputation in MEGA MAC. The evidence of usage is ample to overcome the non-use application but falls far short of demonstrating that consumers would recognise a separate reputation in those words. It is possible that they will perceive a connection between the BIG MAC and the MEGA MAC, but if they did, that would be because of the reputation in BIG MAC.

181    Overall, having regard to the considerations identified in PDP Capital, I am not persuaded that the discretion should be exercised in favour of the retention of biscuits, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar. Those goods must be removed from the Register.

6.    THE ACL CLAIM – “25% MORE AUSSIE BEEF”

6.1    Introduction

182    McDonald’s contends that, in two television commercials, Hungry Jack’s has engaged in misleading or deceptive conduct in contravention of s 18 of the ACL.

183    The first television commercial (first TVC) is described by McDonald’s in its closing submissions by reference to the following, with the words beneath the images forming the voiceover associated with the image displayed:

184    The second television commercial (second TVC) is described by McDonald’s as follows:

185    Hungry Jack’s accepts that the description in relation to the first TVC is accurate. In relation to the second TVC, it contends that the words “25% more Aussie Beef” in the description of the second TVC should be located at the beginning of the second column rather than the end of the first. I have reviewed the advertisements and substantially agree with Hungry Jack’s contention, although the normal consumer, who is not likely to be paying a lawyer’s attention to the commercial, would probably regard the words as bridging the scenes.

186    As framed in closing submissions, the dispute between the parties is a narrow one. Hungry Jack’s accepts that in each of the TVCs it has made the 25% more Aussie beef representation to consumers and members of the public. It also accepts that the unnamed comparator in the commercials is the BIG MAC and that the 25% more Aussie beef representation was made in trade and commerce.

187    This leaves the sole point in issue to be whether the 25% more Aussie beef representation is misleading or deceptive or likely to mislead or deceive. In this regard, the debate turns on two questions: first whether the advertisements convey the representation to consumers that the BIG JACK contains 25% more Aussie beef by its cooked weight or its uncooked weight; and, secondly, if it is by cooked weight, whether the evidence of cooked weight adduced by McDonald’s is sufficiently reliable for it to discharge its onus. If it is, then there is no dispute that the representation is false. The average cooked weight of the BIG JACK beef patties coming is no more than 15% greater than the BIG MAC. If uncooked weight is considered, then the evidence demonstrates that the representation is accurate, with the consequence that the ACL claim advanced by McDonald’s must fail.

188    For the reasons set out below, I have concluded that McDonald’s must succeed.

6.2    The representation made

6.2.1    The submissions

189    McDonald’s submits that consumers of the type likely to be interested in buying hamburgers promoted in the advertisements will be affected by an intuitive sense of attraction garnered by the images and voiceover and will not be guided by any process of analytical or logical choice. They will be people who are driven mainly by convenience, taste and value for money. They will understand the relevant comparison that is being made to be between the weight of the final, ready to eat BIG JACK hamburger and the final, ready to eat, BIG MAC. It submits that this is apparent from the visual imagery and the voiceover. Any doubt that may linger as to whether this is so is not resolved by a disclaimer or explanation to indicate that the comparison is made of the pre-cooked weight of the competitor’s product.

190    Hungry Jack’s submits that the 25% more Aussie beef representation conveys to consumers that a comparison is being made between the pre-cooked meat patties of the hamburgers that are being displayed and the BIG MAC. In relation to the first TVC, it submits that the viewer would perceive that the meat patty displayed is not fully cooked when the circular device or stamp including those words is present on the screen and that the reference to “25% more Aussie Beef” is made in association with the meat patty as an ingredient, not of the cooked and assembled hamburger. It submits that the order of the words in the voiceover confirms that meat is being described in the sense of an ingredient, the words “25% more Aussie beef” referring to the raw meat patty followed by the words “flame grilled” indicating that a cooking process is to be performed on that ingredient. In relation to the second TVC, Hungry Jack’s submits that substantially the same representation is conveyed.

191    Hungry Jack’s submits that the practice in the food industry is to refer to the raw or pre-cooked weight of meat, referring to the affidavit evidence of Mr Baird and Ms Munsie. Mr Baird gives evidence of his understanding that it is a legal requirement that meat products be sold by reference to their pre-cooked weight, because various cooking methods will affect the nett weight. Ms Munsie exhibits extracts from menus of various restaurants to demonstrate the point. Hungry Jack’s submits that consumers are conditioned to understand that reference to the weight of meat patties in hamburgers in general is a reference to their pre-cooked weights.

6.2.2    The relevant law

192    Section 18 of the ACL provides:

18 Misleading or deceptive conduct

(1)    A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

193    For the enquiry under s 18, it is necessary to identify the impugned conduct and then to consider whether that conduct, considered as a whole and in context, is misleading or deceptive or likely to mislead or deceive; Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634; (2014) 317 ALR 73 (Allsop CJ) at [38] (ACCC v Coles).

194    Conduct is misleading or deceptive or likely to mislead or deceive if it has the tendency to lead into error and if there is a sufficient causal link between the conduct and the error on the part of the person exposed to the conduct. The causing of confusion or questioning is insufficient; it is necessary to establish that the ordinary or reasonable consumer is likely to be led into error; ACCC v Coles at [39]. As the Full Court (French, Heerey and Lindgren JJ) said in SAP Australia Pty Ltd v Sapient Australia Pty Ltd [1999] FCA 1821; (1999) 169 ALR 1 at 14 [51]:

… The characterisation of conduct as “misleading or deceptive or likely to mislead or deceive” involves a judgment of a notional cause and effect relationship between the conduct and the putative consumer’s state of mind. Implicit in that judgment is a selection process which can reject some causal connections, which, although theoretically open, are too tenuous or impose responsibility otherwise than in accordance with the policy of the legislation.

195    A representation is likely to mislead or deceive if it may be expected to or has a capacity or tendency to mislead or deceive. In such a case, “likelihood” means a real and not remote chance or possibility of having that effect; Global Sportsman Pty Ltd v Mirror Newspapers Ltd [1984] FCA 167; (1984) 2 FCR 82 at 87 (Bowen CJ, Lockhart and Fitzgerald JJ). It is necessary to view the conduct as a whole and in its proper context. This may include consideration of the type of market, the manner in which such goods are sold, and the habits and characteristics of purchasers in such a market. The context will also include relevant disclaimers or explanations; Butcher v Lachlan Elder Realty Pty Ltd [2004] HCA 60; (2004) 218 CLR 592 at 608 [49] (Gleeson CJ, McHugh, Kirby, Hayne and Heydon JJ). In assessing advertising material, the “dominant message” of the material will be of crucial importance; ACCC v Coles at [42]. The dominant message of an advertisement may be the only one which a consumer takes in, and it is therefore important, as a first step, to identify that message; Australian Competition and Consumer Commission v TPG Internet Pty Ltd [2011] FCA 1254 at [43] (Murphy J). In many cases it will be necessary to consider the class of persons to whom the representation was directed; S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd [1998] FCA 1463; (1998) 168 ALR 396 at 362.

196    In ACCC v Coles Allsop CJ said at [46]:

Half-truths may be misleading by the insufficiency of information that permits a reasonably open but erroneous conclusion to be drawn: Fraser v NRMA Holdings Ltd (1994) 124 ALR 548 at 563; Tobacco Institute of Australia Limited v Australian Federation of Consumer Organisations Inc (1992) 38 FCR 1 at 50. In Tobacco Institute, Hill J referred to the valuable observations of Sheldon J and Sheppard J (when the latter was a member of the Industrial Court) in CRW Pty Ltd v Sneddon (1972) AR (NSW) 17 at 28, as well as making pertinent and valuable observations of his own. Hill J said the following at 50:

However, as was observed by Sheldon and Sheppard JJ in CRW Pty Ltd v Sneddon (1972) AR (NSW) 17 at 28 (the context was the Consumer Protection Act 1969 (NSW):

“An advertisement published in a newspaper is not selective as to its readers. The bread is cast on very wide waters. The advertiser must be assumed to know that the readers will include the shrewd and the ingenuous, the educated and the uneducated and the experienced and inexperienced in commercial transactions. He is not entitled to assume that the reader will be able to supply for himself or (often) herself omitted facts or to resolve ambiguities. An advertisement may be misleading even though it fails to deceive more wary readers.”

Where the advertisement is capable of more than one meaning, the question of whether the conduct of placing the advertisement in a newspaper is misleading or deceptive conduct must be tested against each meaning which is reasonably open. This is perhaps but another way of saying that the advertisement will be misleading or likely to mislead or deceive if any reasonable interpretation of it would lead a member of the class, who can be expected to read it, into error: Keehn v Medical Benefits Fund of Australia Ltd (1977) 14 ALR 77 at 81 per Northrop J and cf the approach taken by Mason J in Parkdale.

197    Where the effect contemplated is on a class of consumers (as in the present case), the effect of the conduct on reasonable members of the class is to be considered; Campomar at [103] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ). The focus of the inquiry is on whether a not insignificant number within the class have been misled or deceived or are likely to have been misled or deceived by the respondent’s conduct. If reasonable members of the class would be likely to be misled, then such a finding carries with it the conclusion that a significant proportion of the class would be likely to be misled; National Exchange Pty Ltd v Australian Securities and Investments Commission [2004] FCAFC 90; (2004) 61 IPR 420 at [70] and [71] (Jacobson and Bennett JJ). The question may be put slightly differently as whether a “not insignificant number” of “reasonable” or “ordinary” members of that class of the public would, or are likely to, be misled or deceived; Peter Bodum A/S v DKSH Australia Pty Ltd [2011] FCAFC 98; (2011) 280 ALR 639 (Greenwood, Tracey and Buchanan JJ) at [204] – [210] per Greenwood J.

6.2.3    Consideration of the 25% more Aussie beef representation

198    The first TVC provides imagery first of a BIG JACK hamburger ready to eat with French fries and a soft drink with a dynamic flame in the background. It then cuts to a scene of meat patties in the process of being cooked over a flame grill. Centrally superimposed over a close-up of the meat is a circular “stamp” or device which includes the prominent words “25% MORE AUSSIE BEEF”. The imagery is of meat patties in an advanced stage of cooking, with the meat having been darkened by a flame grill. The cooking scene concludes with the device fading and the patties being either removed or flipped by a spatula. The third scene is similar to the first, depicting a ready to eat hamburger with fries and a soft drink with flames flickering the background. The voiceover is set out in section 6.1 above.

199    The second TVC has a similar first scene to the first TVC. The second scene is again of cooking meat, but this time shows multiple patties, one being turned by barbeque tongs. All of the patties appear to be at an advanced stage of cooking, with grill marks visible. The device or stamp is set to the right-hand side and remains visible during the second scene, which shows the patties on the grill, but is not present in the final scene, which depicts a ready to serve BIG JACK. The voiceover is as set out above.

200    I have in section 3.6.1 identified that the typical consumer of hamburgers from quick service restaurants will be a member of the public who is likely to make a purchase based on convenience, taste and value. The target market for Hungry Jack’s was said by Mr Baird to be people aged between 18 and 39, although no doubt the age range of those who attend Hungry Jack’s outlets is wider. As I have noted, because people will eat hamburgers, they are likely to pay some attention to make sure that they get the right product. Unlike other relatively inexpensive items, persons consuming food will want to know what they are getting. They are not likely be particularly careless or inattentive.

201    Nevertheless, this is an advertisement that is likely to be viewed in circumstances other than in a Hungry Jack’s restaurant and most likely not at the time when the viewer intends to make a purchase. It is likely that it will be forced upon the viewer, either in a commercial break during a television show or pushed via social media. It will possibly be an uninvited distraction. The viewer is unlikely to pay close attention to every aspect of it, but will form a general impression of its message, which is, simply put, that the BIG JACK has 25% more Australian beef in it that the McDonald’s equivalent, the BIG MAC. I do not think that the consumer will pay much regard to the distinction between cooked and pre-cooked weight. To the extent that they do, many are likely to form an impression that it is cooked weight. That impression is supported by the images of the patties being at an advanced stage of cooking, and the concluding image of a ready to eat hamburger meal. In my view, the message is that when you eat this meal, you will be eating 25% more Aussie beef than when you eat the competitor’s product.

202    In this regard, I consider that the evidence of menus and weighing regulations provided by Hungry Jack’s is tangential to the message conveyed by the whole of the advertisements themselves. It is adduced in order to demonstrate that consumers are somehow acclimatised to the fact that meat is sold by reference to its pre-cooked weight. However, it is the impression carried away from the commercial itself that matters.

203    I am not persuaded that viewers would consider that the commercials are to be viewed in the same way that they would consider an a la carte menu at a hotel, a number of which were exhibited. In any event, most of those menus displayed clarifying messages. For instance, Hungry Jack’s relied heavily on McDonald’s’ promotion of its QUARTER POUNDER hamburger, which promoted “…a whole quarter pound* of 100% Aussie beef”. But the * draws attention to a disclaimer: “*Weight before cooking”.

204    Similar footnotes or disclaimers are present on many of the menus in evidence. Far from suggesting that consumers are generally alert to meat being promoted on the basis of pre-cooked weight, in my view, this evidence supports the proposition that most consumers need to be told when the weight of the meat being promoted or sold in a meal is the pre-cooked weight. An inference readily available is that consumers would tend to assume that, unless the disclaimer is present, it will be the post-cooked weight or that there is an element of ambiguity about whether it is pre-cooked or not, and that this is best resolved by the disclaimer.

205    I am fortified in this conclusion by the fact that, in an internal Hungry Jack’s email dated 31 January 2020, Mr McCallum wrote to Mr Baird including comparative information of the cooked weight of the then proposed 5” and 4” BIG JACK patties as against the BIG MAC, thereby suggesting that this was a metric used within Hungry Jack’s.

206    I consider the evidence of Mr Baird that some regulations require pre-cooked weight to be displayed when selling meat products to be irrelevant to the message that consumers would take from the impugned commercials.

207    Accordingly, I consider that a not insignificant number of reasonable consumers in the class likely to see the advertisements would consider that they convey the message that the cooked weight of the meat in the hamburgers being advertised is 25% greater than that of the comparator hamburger.

6.3    The evidence of the weight of the meat

208    The evidence adduced of the comparative cooked weight of the BIG JACK and BIG MAC meat patties was detailed and extensive.

209    Dr Prestney, who holds a PhD in analytical chemistry, gave evidence as to the steps that she took on 12 November 2020 to measure the weight of the meat patties in question which may be summarised as follows:

(1)    She went to six Hungry Jack’s restaurants located in Brisbane and ordered two BIG JACK hamburgers from each, asking that they be supplied without the cheese and condiments. A colleague did the same for a further four restaurants;

(2)    On the same day, she went to five McDonald’s restaurants and ordered two BIG MAC hamburgers from each, asking that they be supplied without the cheese and condiments. The same colleague did the same for five further restaurants;

(3)    All of the acquisitions above took place between 8am and 2pm on the same day;

(4)    Back at the testing laboratory, the wrapping was removed and the meat patties were separated from the balance of the hamburgers;

(5)    The patties were weighed on an Fx-5000i calibrated balance over a period of 2 hours on the same day as the purchases between about 2pm and 3pm;

(6)    A spreadsheet was created setting out the weights. One sample hamburger (sample 2 from McDonald’s restaurant 9) was supplied with condiments, which Dr Prestney carefully removed before weighing.

210    In her second affidavit, Dr Prestney gives evidence of further testing that she conducted in Brisbane in accordance with a test protocol the subject of Orders made pursuant to r 34.50(2)(b) of the Federal Court Rules 2011 (Cth). She took the following steps:

(1)    She and her colleague went to 10 Hungry Jack’s restaurants between them and ordered five BIG JACK hamburgers at each, without the cheese and condiments;

(2)    She and her colleague went to 10 McDonald’s restaurants and purchased five BIG MAC hamburgers, without the cheese and condiments;

(3)    All of the acquisitions were made on the same day, between 8am and 2pm;

(4)    Weighing of the patties took place progressively during the morning and later in the day, using a NATA accredited balance;

(5)    A set of spreadsheets was created recording the results of the testing and a statistical analysis of the results.

211    Mr Balshaw, who has worked as an analyst in the food industry since 1992, also conducted testing in accordance with the same protocol that was the subject of Orders on hamburgers acquired from restaurants located in Melbourne. He gave evidence of taking the following steps:

(1)    He and a colleague went to 10 Hungry Jack’s restaurants and 10 McDonald’s restaurants and acquired five BIG JACK and BIG MAC hamburgers at each, ordering them without the cheese and the condiments;

(2)    The acquisitions were made on 14 July 2021 between 8am and 1.30pm;

(3)    At about 2pm he disassembled the hamburgers and used a NATA accredited top loading balance accurate to two decimal places to weigh the patties;

(4)    A set of spreadsheets was created to record the results together with a statistical analysis of the results.

212    Hungry Jack’s levelled a series of criticisms at the processes described above based on evidence adduced during cross examination of Dr Prestney and Mr Balshaw. It submitted that by removing the condiments and cheese, the testing had violated the integrity of the hamburgers such that it was neither a cooked BIG JACK nor a cooked BIG MAC hamburger patty that was being weighed. It contended that the protocols provided no sequence in which the respondents were to be visited or timeframe between the acquisition and weighing, with the consequence that the patties were not weighed immediately after purchase. Nor was account taken for moisture loss from the patties to the bun or for moisture lost by heat dissipation over time which might have altered the results. Furthermore, the protocol did not require that after acquisition the hamburgers be refrigerated and, in fact, for all but ten of the hamburgers acquired by Dr Prestney, they were left in the car in the bags that they were purchased in until they were tested, with many sitting in the car for a number of hours before being taken to the testing laboratory. Finally, Mr Balshaw gave evidence that the bun on the BIG JACK tended to stick to the patties and bun remnants had to be removed by him with a paper towel.

213    I do not consider that any of these criticisms are likely to have a material bearing on the results recorded which, as I set out below, indicate that the cooked weight of the respective patties demonstrates that the weight of the meat in the BIG JACK is far short of being 25% greater than the meat in the BIG MAC.

214    If the hamburgers had been ordered with cheese and condiments, then those ingredients would in any event have had to be removed to weigh the patties. A measurement taken without the condiments is more likely to provide an accurate weight of the meat. Whilst loss of moisture either through evaporation or absorption into the bun might have had a slight bearing on the actual weight of the patties, there is no suggestion that the BIG JACK patties were treated any differently to the BIG MAC patties, with the consequence that it is reasonable to expect that any moisture loss is likely to have been equivalent. Mr Balshaw gave his opinion that the bun remnants present would be unlikely to have a material effect on the weight recorded.

215    The results are telling:

216    The relevant question is whether or not it was a misrepresentation for the advertisements to tout that the BIG JACK contained 25% more Aussie beef than the BIG MAC. The above results demonstrate, with a very considerable margin of error, that the weight difference is significantly less than 25%. Hungry Jack’s chose not to elicit any evidence in response to the testing evidence to which I have referred.

217    Accordingly, I conclude that the misrepresentation case is made out.

7.    CONCLUSION

218    I have concluded that McDonald’s’ trade mark infringement case fails, as does its challenge to the validity of the BIG JACK registered trade mark. However, McDonald’s succeeds in its ACL claim. Hungry Jack’s has succeeded in defending the trade mark infringement case, but failed in its endeavour to secure the revocation of the MEGA MAC registered trade mark, with the exception of some goods, which must be removed from its registration.

219    I will direct that the parties confer and provide short minutes of order giving effect to these reasons, including a timetable for the resolution of any dispute as to costs and any residual issues for determination.

Associate:

Dated:    15 November 2023