Golden Arches vs the Hungry One: McDonald's, Hungry Jack's, and the Limits of Brand Coexistence

Golden Arches vs the Hungry One: McDonald's, Hungry Jack's, and the Limits of Brand Coexistence

In most industries, two global giants sharing the same market tend to maintain a wary distance — competing vigorously on products and price but leaving each other's branding alone. In the fast food sector in Australia, that uneasy détente between McDonald's and Hungry Jack's (the Australian incarnation of Burger King) reached a new level of formality in 2023, when McDonald's commenced Federal Court proceedings against Hungry Jack's for alleged trade mark infringement. The decision in McD Asia Pacific LLC v Hungry Jack's Pty Ltd [2023] FCA 1412 is a significant 2023 addition to the body of Australian trade mark law.

Background: Two Iconic Brands, One Dispute

McDonald's needs no introduction in Australia. The golden arches, the colour palette, the distinctive logo and packaging are among the most recognisable commercial imagery in the world. The Australian McDonald's business is operated under licence from the global McDonald's system, with relevant trade mark rights held by McD Asia Pacific LLC.

Hungry Jack's occupies a similarly prominent position in the Australian fast food landscape — perhaps uniquely so, given that its parent brand (Burger King) is largely unknown in Australia due to an existing trademark registration that prevented Burger King from using its own name here. Hungry Jack's has operated in Australia since 1971 and has built substantial independent brand recognition in the Australian market.

The proceedings brought by McD Asia Pacific alleged that Hungry Jack's had used, or was using, marks that were substantially identical with or deceptively similar to McDonald's registered trade marks — and that this use constituted infringement under the Trade Marks Act 1995 (Cth) and misleading conduct under the Australian Consumer Law.

The Legal Framework in Play

Infringement Under Section 120

For trade mark infringement to be established, McDonald's needed to demonstrate that Hungry Jack's had used a sign that was substantially identical with or deceptively similar to one or more of McDonald's registered marks, in relation to the same or similar goods and services. Given that both companies operate in the fast food sector — restaurants, food products, beverages — the "same goods and services" element is not the difficult part of this analysis. The contested question would turn on the nature and similarity of the specific marks in issue.

What makes this case particularly interesting from a legal perspective is the question of how the deceptive similarity test operates when both marks are globally recognised. Both McDonald's and Hungry Jack's are brands that virtually every Australian adult would know. Does that bilateral familiarity make confusion more or less likely? The deceptive similarity test asks about the ordinary consumer with imperfect recollection — a person who might see one brand's mark and, separately, encounter the other's, and potentially form an incorrect view about their relationship.

Reputation, Brand Elements, and the Scope of Registration

McDonald's global brand encompasses a range of registered elements — word marks (such as McDONALD'S), device marks (the golden arches logo), colour combinations, and packaging designs. The breadth of a major brand's registered portfolio means that alleged infringement can arise from many different types of similarity, not just name similarity.

As confirmed by the High Court in Self Care v Allergan [2023] HCA 8 (decided the same year), reputation itself does not expand the scope of trade mark protection under section 120(1). The comparison is between the registered mark and the allegedly infringing sign, assessed objectively. This principle applies even where both marks are famous — fame on both sides of the comparison does not change the legal test.

ACL Misleading Conduct

In parallel with the trade mark claims, the proceedings included allegations of misleading or deceptive conduct under section 18 of the Australian Consumer Law. Misleading conduct claims in the fast food context might arise from advertising or branding that implies a commercial connection, sponsorship, or endorsement that does not exist. Unlike trade mark infringement, the ACL does not require the defendant to have used a sign "as a trade mark" — it focuses on the overall conduct and its likely effect on consumers.

What This Case Tells Us About Trade Mark Strategy

Even Giants Enforce Their Rights

One lesson that emerges clearly from proceedings of this kind is that trade mark rights do not enforce themselves. Even a brand as dominant as McDonald's — with global recognition, substantial resources, and decades of established brand equity — actively monitors its registered rights and takes legal action when it perceives infringement. Brand protection is not something that only smaller businesses need to worry about; it is a continuous discipline that operates at every level of commercial activity.

Registration of All Brand Elements Matters

Major brands register every significant element of their visual identity — not just their primary word mark, but also their logos, colours, packaging designs, slogans, and distinctive elements of their trade dress. This breadth of registration gives them multiple angles from which to approach any alleged infringement. Businesses at every scale should consider what elements of their brand are distinctive and registrable, and ensure those elements are protected across relevant classes.

The Coexistence Challenge

Where two businesses operate in the same industry over a long period, there is sometimes an argument that consumers have learned to distinguish between them and that the risk of confusion is diminished by that familiarity. But trade mark law does not simply assume coexistence legitimises similarity. Each case is assessed on its own facts, and historical coexistence may be relevant to certain defences or remedies, but it does not override the rights conferred by registration.

Strategic Takeaways for Business Owners

• Register all distinctive brand elements. Word marks, logos, colour combinations, packaging, and slogans can all be registered if they are sufficiently distinctive. A comprehensive portfolio protects you from multiple angles.

• Trade mark rights require active enforcement. Even well-known marks must be policed. Monitor new trade mark applications, competitor advertising, and new entrants to your market for potential infringements.

• Deceptive similarity is assessed objectively. The fame of both parties' marks does not change the legal test. The question remains: would an ordinary consumer with imperfect recollection be likely to be deceived?

• ACL claims run alongside trade mark claims. In any branding dispute, consider both the trade marks angle and the misleading conduct angle. They have different elements and may lead to different outcomes, but together they provide a more complete picture of the legal risk.

• Even dominant brands can find themselves in court. The lesson for all businesses — large and small — is that IP disputes are a normal feature of competitive markets. Proactive registration and monitoring are the most cost-effective tools to manage that risk.

Conclusion

The 2023 proceedings between McDonald's and Hungry Jack's illustrate that trade mark law is very much alive in Australia's most competitive consumer markets. High brand recognition on both sides does not resolve disputes — it may actually intensify them. The same legal framework that governs trade mark rights for small businesses applies with full force to the largest brands in the world.

If your business is facing a trade mark dispute — or seeking to build a brand registration strategy that will support long-term enforcement — specialist advice is the foundation of an effective approach.

Contact Stellar IP Law to discuss your trade mark strategy with an experienced IP lawyer.