McDonald’s Loses Latest Trade Mark Food Fight

A three year trade mark battle between two Australian fast food giants, McDonalds and Hungry Jacks, has come to an end.

McDonalds is known to be an extremely litigious company when it comes to trade mark law having successfully blocked other companies in the past from using similarly sounding names. They’ve previously blocked a dentist in New York from using the name “McDental” as well as a Singaporean company trying to register “MACCOFFEE” as an EU trademark.

In 2020, the US hamburger giant sued Hungry Jack’s, claiming its sale of the Big Jack and Mega Jack burgers infringed the Big Mac trade mark.

The federal court dismissed the allegations, saying neither burger brand was deceptively similar to the Big Mac and Hungry Jack’s had not engaged in trade mark infringement.

But McDonald’s succeeded on a separate consumer law claim. The court found Hungry Jack’s had misled consumers by advertising that its Big Jack burger contained “25% more Aussie beef” than its Big Mac counterpart.

Read more from The Guardian here.

And for more information on False or Misleading claims from the ACCC, read more here.

What are some other trade mark “food fights” McDonalds have been involved in over the years? Let’s take a look.

Early 2019

McDonalds sought to block an Ireland based fast food chain named Supermac’s from registering their name due to its similarity to “Big Mac.” Unfortunately for them, a European Union case ruling at the time was not in their favour.

McDonalds lost their right to the trade mark “Big Mac” due to not proving genuine use of it over the five years prior to the case being lodged in 2017.

Supermac’s said they were “delighted with their victory in the trade mark application and in revoking the Big Mac trade mark which had been in existence in 1996. This is a great victory for business in general and stops bigger companies from ‘trade mark bullying’ by not allowing them to hoard trade marks without using them.”

While Supermac’s said they have never had a product called “Big Mac”, they were free to use their name and expand in the United Kingdom and Europe. The ruling meant that other companies (including McDonalds) were able to use the term ‘Big Mac’ across the EU.

Read more here.

 

Late 2019

In a second trade mark blow to fast food giant McDonalds, after losing their Big Mac trade mark rights earlier in 2019, an EU court ruled they couldn’t claim the trade mark “Mc” on certain products due to Irish fast food chain Supermac’s successfully challenging their use of the trade mark.

McDonalds were able to prove they were using the ‘Mc’ prefix for chicken nuggets and sandwiches but can no longer claim it for restaurant services, any foods prepared from meat, poultry, fish, pork, vegetables, pickles, dairy products or ‘Mc’ labelled coffee, tea, desserts, biscuits, chocolate, non-alcoholic drinks and syrups.

Pat McDonagh, founder and managing director of Supermac’s, told the BBC at the time, “the Mc is back. We are delighted that the EUIPO found in our favour and that we can now say that we have rid Europe of the McDonald’s self-styled monopoly of the term Mc.”

Read more here.

Litton Legal’s Assistance with a McDonalds Defamation Case

In 2018, our principal solicitor Rebecca acted as instructing solicitor for barrister Justin Castelan on a local defamation case for prominent Albury businesswoman Maree Cables. Cables was the franchisee for 8 McDonalds stores in the Albury/Wodonga area and was instrumental in establishing the Ronald McDonald House in 2010, a charitable organisation that assists families with sick children. She was chair of Arts Albury and considered by McDonalds Head Office to be such a commendable franchisee that she was asked to take over struggling stores in Tumult and Yass which she did.

On 21st November 2016 the defendant in Cables’ defamation case, who was an administrator on Facebook page ‘Everything Albury Wodonga,’ published a post seeking negative comments about Ms.Cables. The group had 9,500 followers and further negative and anonymous comments were published seeking to get Ms.Cables into trouble with McDonalds Head Office.

McDonalds head office did take an interest in these allegations and flew investigators in to interview staff and customers before entering into negotiations with Ms.Cables for her to sell her stores. McDonalds never issued any breach notices to Ms.Cables however, indicating that the Facebook claims were baseless.

The defamatory Facebook posts were of a serious nature containing entirely false allegations about her and caused significant emotional distress and damage.

She was awarded $200,000 in damages, the highest payout at the time in Australia in respect of a Facebook publication.