Two recent high profile Australian intellectual property cases show that while clever marketing strategies can be used to signal similarities and differences between your business and that of your competitors, care needs to be taken or you could be at risk of claims of trade mark infringement.

The High Court of Australia in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (Self Care) found that Allergan’s famous ‘BOTOX’ trade mark was not infringed by its competitor branding a competing product ‘PROTOX’.  Despite obvious similarities, the Court was of the view that there were sufficient differences so that an ordinary consumer would be unlikely to confuse PROTOX and BOTOX, and there was no evidence of actual confusion by consumers.   

In another case involving well-known consumer products, McD Asia Pacific LLC v Hungry Jack’s Pty Ltd, the Federal Court of Australia was asked to consider a trade mark infringement claim made by fast-food giant McDonald’s against its competitor, Hungry Jacks (known as Burger King in New Zealand).  At the heart of the case was Hungry Jacks’ registration of the trade mark ‘Big Jack’ for a rival burger to McDonalds’ ‘Big Mac’.  In 2020, McDonald’s failed to oppose the registration and so Hungry Jack’s obtained registration of the ‘Big Jack’ trade mark.  Following the decision in Self Care, the Court decided that use of ‘Big Jack’ and ‘Big Mac’ were unlikely to lead to consumer confusion and there was no trade mark infringement.

Interestingly, in both cases the Courts determined that the reputation that either trader had in the trade marks in question was not to be taken into account.  Instead, the Courts considered whether the trade marks, on their face, were confusingly similar.  

How do these decisions affect your business?

While Self Care and Hungry Jacks were able to continue using their brands, including, in Hungry Jacks’ case by using a cheeky advertising campaign - adopting a similar trade mark to that of a competitor can be risky.

These cases indicate that, at least in Australia, the courts may be more willing to find that similar trade marks for competing brands do not meet the trade mark infringement test.  However, there is a fine line and, historically, courts have made adverse findings in comparable cases. 

When brainstorming names for your business or products, you should consider whether they may be deceptively similar to a competitor’s brand.  This may be a calculated risk, as in Self Care and Hungry Jack’s case, but in every situation, it is wise to gain trade mark registration early to help protect your business and brand. 

It is critical that you take immediate action if you believe that a competitor is leveraging your brand by using a similar trade mark.  Proactive steps may also include monitoring and opposing trade mark applications for similar marks lodged by your competitors.

Our team of intellectual property experts are available to help you develop an intellectual property strategy, gain trade mark registration, and protect your brand from trade mark infringement.