As one of the largest private employers in the world, it probably shouldn’t come as too big a surprise that McDonald’s is fairly protective of its trademarks. The company, large legal coffers though it has, is not undefeatable, however. It was only a year or so ago, for instance, that McDonald’s famously lost its “Big Mac” trademark in Europe when another chain, Supermacs, got it cancelled as it expanded into more European markets.

Well, now Mcdonald’s is facing another trademark issue in Australia. Down Under, there is a fast food chain called Hungry Jack’s, which is actually a part of Burger King. Burger King, of course, is McDonald’s chief global rival. There is something of a proxy war currently being waged over Hungry Jack’s “Big Jack” sandwich, with McDonald’s crying trademark infringement over its “Big Mac” trademark.

McDonald’s Asia-Pacific filed Federal Court proceedings on August 28 against Hungry Jack’s over its rival’s new burger trademark, which it claims is “substantially identical with or deceptively similar” to its own Big Mac trademark.

Hungry Jack’s has been the owner of the registered trademark “Big Jack” since November last year but McDonald’s says the trademark “is liable to be cancelled, and should in the exercise of the court’s discretion be cancelled” on a number of grounds, including that it is “likely to deceive or cause confusion” among consumers.

So let’s stipulate immediately that the rival for McDonald’s absolutely constructed a sandwich burger that has a lot of similarities to a Big Mac. The construction of the food is similar and the names both have the word “Big” in them, and then culminate in designators for the companies selling them, but those names rhyme. Big Mac. Big Jack. You get it.

So, with all of that stipulated, is this trademark infringement? Well, as always, that comes down to the question of whether there will be public confusion as to the source of the products. And Hungry Jack’s is apparently prepared to argue that there won’t be.

In a defence filed in the Federal Court on Friday, lawyers for Hungry Jack’s said consumers were “well aware” of the “competitive rivalry between Hungry Jack’s and [McDonald’s]” and it had not infringed the latter’s trademarks. Consumers would not be deceived into thinking the Big Jack was a McDonald’s product, they said.

Hungry Jack’s said it was entitled to use the Big Jack trademark, which played on the company’s name and the name of “its founder and current owner, Jack Cowin”. The word Jack was “closely associated by consumers with Hungry Jack’s’ goods and services”, the company’s lawyers said.

Add to the above that much of the complaints McDonald’s lodges aren’t relevant in a trademark dispute. The recipe for the sandwich doesn’t really matter, unless McDonald’s has trademarked this construction. If it has done so, it certainly hasn’t said as much. The word “Big” in the name of each product basically doesn’t matter, since it is both descriptive and in common use in trademarks all over the place. Instead, this is going to come down to whether “Jack” is too similar to “Mac”, sufficiently so to lead to public confusion.

Which is where Hungry Jack’s point is made. The rivalry between these two is as famous in Australia as Burger King versus McDonald’s is in America. Given that notoriety, and the simple fact that the dispute is over two words that very specifically designate the origin of the product, it’s hard to imagine the public being confused by any of this.

In other words, it would seem that McDonald’s would need to bring instances of actual confusion to court to make this lawsuit successful.

Techdirt.