KNOWLEDGE CENTRE

A Bit of a Pickle: McDonalds Isn’t “Lovin’ It”…. We’re looking at you Hungry Jacks!

The recent introduction of a new burger has stirred some rather large beef between two iconic fast-food giants, McDonalds and Hungry Jacks.

It began with an ad campaign launched by Hungry Jacks to promote their new ‘Big Jack’ burger, a name which most members of the general public immediately compared to McDonalds’ famous ‘Big Mac’. Facebook posts prior to the release of the TV ads also claimed, “There’s something… ‘special’ about our new Big Jack” followed by a winking emoji.[1]

While most found the advertising to be comedic, McDonalds was not “lovin’ it” and took significant issue with the new burger’s resemblance to the ‘Big Mac’ and filed a claim in the Federal Court against Hungry Jacks, alleging that the Big Jack infringed McDonalds’ intellectual property. They also argued that the registration of ‘Big Jack’ as a trademark was made in bad faith.

Undeterred, Hungry Jacks has since hit back at McDonalds in their next series of recent ads, acknowledging that ‘Someone’s suing Hungry Jacks,’ but that Australians were unlikely to get the Big Jack confused with ‘some American burger’, as they claimed the Big Jack was ‘clearly bigger’. They also defended the name of the burger, saying it was intended as a play on the name of the company and a link to Jack Cowin, the founder and current owner of Hungry Jacks.[2]

Sydney chain Rashay’s also decided to jump into the mix with their Big MacJac, and were swiftly handed a cease and desist letter from the golden arches.

It is a very amusing and interesting case and to prove trademark infringement to the Federal Court, McDonalds will have to argue two points. Firstly, they will have to show that Hungry Jacks’ ‘Big Jack’ trademark is substantially identical with or deceptively similar to McDonalds’ ‘Big Mac’ trademark under section 44 of the Trade Marks Act 1995 – which will hinge on whether consumers are likely to be confused or assume a connection between the two burgers. This could be difficult to prove given the well-known rivalry between the two companies; is the average person likely to believe that a collaboration is going on between the two, or that they are the same burger?

Secondly, under section 60 of the Trade Marks Act 1995, they will have to show that the McDonalds’ Big Mac trademark has acquired a reputation in Australia and because of that reputation, consumers are likely to be deceived. Proving that the Big Mac has a reputation will be easy enough; more difficulty may arise, again, with arguing that consumers will be confused.

In addition, McDonalds has also opposed the Big Jack trademark under section 62A of the Trade Marks Act 1995, arguing that Hungry Jacks registered the Big Jack trademark in ‘bad faith’ – alleging that they showed ‘flagrant and wilful disregard’ of McDonalds’ trademarks.

This is far from the first time McDonalds has filed a lawsuit over intellectual property. In 1994, San Francisco coffee shop ‘McCoffee’ was forced to change its name after McDonalds claimed they infringed on their trademark.[3] Similarly, a restaurant in the Philippines named ‘McJoy’ was required to change their name to ‘MyJoy’ when McDonalds made the decision to expand into the country.[4]

It’s not all wins though and in 1996, a Denmark-based hotdog vendor Allan Pederson, trading under the name ‘McAllan’, successfully defeated a claim filed by the fast food giant after the court ruled that consumers were unlikely to mistake a street food stand for a McDonald’s franchise.[5] Denmark was clearly not “lovin’ it”. 

So how will the matter of the Big Mac v Big Jack be settled? Presently, the judge presiding over the case, Justice Burley, has moved the case to mediation and given McDonalds’ history of litigation over trademarks, it’s unlikely they’ll agree to meat in the middle and this will continue to be an interesting case to watch in 2021.

Be sure to follow Enterprise Legal for further updates and if your business would like to know more about protecting your intellectual property then let's talk:

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Sources:

[1] https://www.news.com.au/finance/business/other-industries/mcdonalds-sues-hungry-jacks-for-big-mac-burger-lookalike-big-jack/news-story/1348c77e5ac6d698529af2355693526f

[2] https://www.smh.com.au/national/mcdonald-s-moves-to-supersize-lawsuit-against-hungry-jack-s-20201002-p561bx.html

[3] https://www.mcspotlight.org/media/press/littlepeople.html

[4] https://www.marketwatch.com/story/philippine-supreme-court-upholds-mcdonalds-trademark-rights

[5] https://web.archive.org/web/20151019134933/http:/www.mcspotlight.org/media/press/ap_4dec96.html


Proposed Changes to Casual Employment

Casual employment has been a hotly contested topic for quite some time, particularly following the controversial decision in WorkPac Pty Ltd v Rossato (‘Rossato’), which was handed down on 20 May 2020.

In a nutshell, the decisions of Workpac Pty Ltd v Skene [2018] FCAFC 131 and Workpac Pty Ltd v Rossato [2020] FCAFC 84 found that casual employees who work regular, consistent hours with a firm advance commitment to work, may be owed leave and other entitlements such as redundancy pay even where they have received a 25% casual loading (double dipping drama).

There will be no easing of casual employment controversy in 2021 as the Rossato decision is off to the High Court and further, the Australian Government recently introduced the Fair Work Amendment (Supporting Australia’s Job and Economic Recovery) Bill 2020 (the Bill) to Parliament.

If the Bill passes Parliament, it will bring about various changes to casual employment, including certainty to employees and employers regarding the rights and obligations of both parties and the definition of a casual employee is proposed to be amended to where an offer of employment is made on the basis that the employer makes no firm advance commitment to continuing and indefinite work according to an agreed pattern of work.

Relevant factors to whether there is a firm advanced commitment to work include:

  • the ability to accept or reject work;
  • whether the employee will work only as required; and
  • whether a casual loading is paid;

assessed at the time the engagement is entered into.

If the Bill is successful and in good news for employers, employers will also have the ability to set off any claim for annual leave, personal leave and redundancy pay against the 25% casual loading in an attempt to reduce the potential for “double dipping”.

The laws are currently proposed to work retrospectively, however, there are no guarantees that this will be held to be valid. The Bill also proposes a number of changes to provisions regarding casual conversion, flexible work directions and enterprise agreements – important but less controversial topics.

It is recommended that employers continue to stay up to date with the developments in the casual employment sphere and be prepared for changes in the future. At this stage, the Bill is only proposed and may change before coming into force.

 

For advice and support with managing your casual workforce, contact our Workplace Relations team at Enterprise Legal today for a complimentary introductory consultation:

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Employee Silliness during the Silly Season

After the year that has been, it is understandable that a lot of workplaces will be gleefully looking forward to kicking back a few bubbles and toasting to end of 2020.

But it is important to sing the tale of fateful Christmas parties past and remind employers and employees that the laws of reasonable management action, workplace health and safety and misconduct continue to apply and will land both employers and employees on the naughty list if the elves fall off their shelves.  

 

The Tale of Vai v ALDI

On a not so merry Christmas, the Dandenong ALDI Store and Distribution Centre held their annual Christmas Party in a private function room at the Brownstone Micro Brewery, with all costs, including alcohol paid for by ALDI.  

At the event, Warehouse Operator, Mr Sione Vai, consumed a significant amount of alcohol and had also had pre-drinks before attending the event. He was subsequently cut off by the bar staff and managers and in a drunken state, threw a glass of beer in the direction of his colleagues, narrowly missing them and smashing on the wall behind them. 

Mr Vai was later dismissed for his conduct and brought an application in the Fair Work Commission alleging that he had been unfairly dismissed.

Mr Vai’s claim was unsuccessful on the grounds that:

  • ALDI had taken appropriate steps to control and health and safety of its staff by engaging a private venue with Responsible Service of Alcohol obligations to control and serve alcohol to attendees;
  • It was not a situation in which it was a case of “help yourself” in regard to obtaining drinks – unlike the decision in Keenan v Leighton Boral Amey NSW Pty Ltd [2015] FWC 3156 where an employee’s drunken antics were held to not be a valid reason for his dismissal in the circumstances where his employer provided uncontrolled access to alcohol at a work Christmas function;
  • The throwing of a full glass of beer at colleagues was so significant to warrant his dismissal as it could have had significant consequences had they had been hit; and
  • Procedural fairness and natural justice were afforded.

 

Tips for Having a Safe and Merry Christmas

Whilst it is appreciated that it can be difficult for employers to predict all facets of employee behaviour at work sponsored Christmas events, under occupational health and safety laws employers have a legal responsibility to provide a safe work environment for all employees during work related activities, including Christmas parties.

As such, it is vital that in the lead-up to Christmas, employers take steps to implement effective strategies to prevent unwanted incidents and to ensure the safety of employees at work endorsed Christmas functions.

This may include:

  • Refreshing employees' awareness of any applicable workplace policies or codes of conduct;
  • Reminding employees to drink responsibly and to organise appropriate transport to and from the venue if they intend to consume alcohol;
  • Setting clear standards for behaviour and conduct ahead of the event;
  • Monitoring alcohol consumption and ensure supply is not uncontrolled (consider ensuring the service of alcohol is carried out by someone who holds a current Responsible Service of Alcohol certification); and
  • Taking proactive steps to manage poor behaviour and conduct immediately.

 

We hope you all have a safe and merry festive season and you all take steps to ensure neither your employees or your business end up on the Fair Work Commission or Workplace Health and Safety Regulator’s naughty list.

 

...but if you do, always remember that the experienced team at Enterprise Legal are here to help!

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Burrows v Houda – When an Emoji Says a Thousand Words!

Think emojis don’t count when it comes to defamatory comments online? Think again!

Recently the District Court of New South Wales determined that an emoji could convey a defamatory meaning. In the case of Burrows v Houda [2020] NSWDC 485, proceedings were brought by Zali Burrows against Adam Houda in relation to posts made on Twitter in July 2019 and May 2020.

Ms Burrows made the claim that words and images in the tweets gave rise to defamatory imputations. One of Mr Houda’s tweets linked to an article in the Herald which reported a judge’s suggestion that Ms Burrows’ conduct be referred to the Law Society for potential disciplinary action, which received a number of replies. One of these replies stated “July 2019 story. But what happened to her since?” Mr Houda responded with a ‘zipper-mouth face’ emoji. 🤐

Ms Burrows asserted that the tweet conveyed a range of false and defamatory claims, including that she had been disciplined due to misconduct.

In determining the matter, her Honour Justice Gibson confirmed that:

“As is sometimes the case with social media posts, the meanings may be gleaned from pictures as well as words, and where liability for publication arises from more than one post, from the dialogue which ensues.”

Justice Gibson referred to the online dictionary Emojipedia and said that the zipper-mouth emoji means ‘a secret’ or ‘stop talking’ “in circumstances where a person impliedly knows the answer but is forbidden or reluctant to answer.” In the context of Mr Houda’s other tweets, the implication of the emoji that Ms Burrows had acted improperly was pretty clear.

Her Honour noted that “the ordinary reasonable reader of tweets derives the meaning of the imputation from the circumstances surrounding the tweet,” and was satisfied that most social media users would make adverse assumptions about Ms Burrows given that the tweets were accompanied by an article that had the effect that Ms Burrows had acted unsatisfactorily.

This decision is especially notable, not only as it set a precedent that an emoji alone can be defamatory, but also because it is the first instance where an Australian Court has considered an emoji in written communications. Given the increasing use of emojis in day-to-day life, it certainly won’t be the last.

The Burrows matter is a well-timed reminder to pause and consider before posting comments that could be construed as being defamatory on social media, even when comments are limited to an emoji.  

 

If you believe you have been subject to defamatory comments, with or without emojis 😆, the experienced team at Enterprise Legal can help you to weigh up your options.

Contact us today:

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