20/12/2023·4 mins to read
IP and Marketing Law Christmas Crackers 2023
As we head into the silly season, it is time to look back on some of the unusual and interesting intellectual property and marketing law news that hit the headlines in 2023.
Advertisements for the Hell Pizza chain’s Unholy Donut dessert, which was promoted for Valentine’s Day, was the subject of complaints to the Advertising Standards Authority (ASA). One of the advertisements on the Hell Pizza website featured an image of an Unholy Donut with two chocolate confectionery fingers, alongside the text “This Valentine’s Day, get two fingers in your donut…”.
An advertisement for the Unholy Donut that featured on social media
One complainant was concerned that the advertisements contained inappropriate sexual innuendo, while another complained that the advertisements were "disgusting” and “insinuated the violation of a woman’s private area”.
Hell Pizza defended its position, explaining that the advertisements showed how its “Unholy Donut is made by inserting two fingers of a chocolate covered confectionery into a freshly fried salted caramel donut”. Hell Pizza remarked that it was disappointed that a complainant assumed there was gender-based innuendo, and stated that Hell Pizza “would never discriminate against anyone who chooses to get 2 fingers in their donut, based on gender”.
The ASA Complaints Board considered that some consumers may interpret the Unholy Donut advertisements as having underlying sexual innuendo. However, the Board found that the advertisements were not likely to cause serious or widespread offence, and therefore did not uphold the complaints.
No news yet on whether the Unholy Donut ranked in the year’s list of the most romantic Valentine’s Day gestures.
Love to ride
An online video advertisement for the car dealership Portage Cars that garnered over 37,000 likes on TikTok was also subject to a complaint to the ASA. The advertisement featured viral car marketing personality Kiedis Haze presenting a comedic sales pitch. Commenting on a Mitsubishi Outlander plug-in hybrid vehicle, Haze remarked that “you’ll look like a MILF driving it”, referred to “doing the deed under the fireworks at New Year’s” and commented that the vehicle uses a “plug which matches the inserting action you’ve been getting”. The advertisement concluded by saying that Portage Cars has the “easiest finance in the world”.
A complainant took exception to the advertisement, saying that it contained sexual innuendo and that the claim “easiest finance in the world” was unsubstantiated.
Portage Cars defended the video, arguing that it was a funny car review, rather than an advertisement, and that “easiest finance in the world” was said in jest. Portage Cars also referred to the popularity of the video with the public, noting that various news media had also reported on it.
The ASA Complaints Board took the view that the video was in the nature of an advertisement, but considered that it was light-hearted and was not likely to cause serious or widespread offence. However, the Board determined that the claim of “easiest finance in the world” was unsubstantiated and breached the Financial Advertising Code, and therefore upheld the complaint in part.
Portage Cars has since the removed the advertisement, so we will just have to imagine what we might look like driving the car.
Put a fork in it
In a culinary clash between tradition and innovation, the French government has issued a revised proposal to ban the use of 21 meat-related terms like "steak," "grill", "spare ribs" and “ham” for describing plant-based food products. However, the proposal allows the use of 120 other meat-related terms, such as “sausage”, provided the plant protein content of the products does not exceed certain amounts.
According to the French Agriculture Minister, the proposal is intended to address issues of transparency and loyalty amongst consumers and producers, and to avoid misleading claims.
The revised proposal follows an attempt by the French government to introduce similar measures last year, which was suspended by a French court on the basis that the earlier proposal was too vague and the timing was too short to enable implementation.
The steps taken by the French government are in the context of a global issue of how to regulate the labelling of plant-based food alternatives. In 2021, the European Parliament decided not to progress changes that would have banned the use of dairy-related terms such as “buttery” and “creamy” for plant-based foods. However, last year, the Turkish government reportedly banned the sales of vegan “cheese”. Meanwhile in South Africa, an attempt is underway to prohibit the use of words such as “veggie biltong” and “plant-based meatballs”, although this is subject to review following court action by interest groups.
We look forward to seeing how different countries grapple with the issue, and particularly how treasured local lingo like “bangers” and “snags” are treated.
Fast-food titans McDonald's and Hungry Jack's, part of the Burger King franchise, clashed in a trade mark battle that recently concluded with a decision issued by the Federal Court of Australia (subject to any possible appeal).
Hungry Jack’s launched its Big Jack and Mega Jack burgers in 2020 as direct competitors to McDonald’s Big Mac burger. Not flattered with the imitations, McDonald's issued proceedings against Hungry Jack’s, challenging the validity of Hungry Jack’s BIG JACK trade mark registration and also claiming that Hungry Jack’s sale of the Big Jack and Mega Jack burgers infringed the BIG MAC and MEGA MAC trade marks.
Examples of Hungry Jack’s products featured in the Federal Court’s judgement
Things got cooking even more when Hungry Jack's retaliated with a series of video commercials attacking the amount of meat in McDonald’s products. In one of the commercials, the voiceover said “Someone’s suing Hungry Jack’s. They reckon Aussies are confusing the BIG JACK with some American burger, but the BIG JACK’s clearly bigger with 25% more Aussie Beef, flame grilled with a barbeque taste! [Disclaimer: *When compared to competitor’s product] And you can only get the BIG JACK at Hungry Jack’s. The burgers are better.”
McDonald's was not lovin’ it and added an additional claim to the proceedings, alleging that Hungry Jack’s “25% more Aussie beef” representation was misleading or deceptive.
In relation to the trade mark claims, the Court found that consumers would not be confused between the burger brands. The Court noted the difference between the recognisable forename "Jack" and the unusual abbreviation "MAC", with both sharing the descriptive label "BIG" but overall conveying different concepts. Similar findings were also made in relation to the comparison of Mega Jack and the MEGA MAC mark. McDonald’s trade mark infringement and validity claims therefore failed. Hungry Jack’s succeeded in getting McDonald’s MEGA MAC registration partially cancelled for some goods.
In relation to the “25% more Aussie beef” claim, it was accepted that if considering the uncooked weight of the respective patties, then Hungry Jack’s claim about the amount of beef would be accurate. But if considering the cooked weight of the respective patties, then the Big Jack patties would only be 15% greater than the Big Mac patties. Taking into account the impression given to consumers that it was a cooked product, the Court therefore found that Hungry Jack’s “25% more Aussie beef” claim was misleading.
Unfortunately, the Court did not provide any valuable insights about which burger was the tastiest, leaving it to consumers to make up their own minds.
In a fur-raising legal clash, the famous whiskey-maker Jack Daniel’s took issue with one of VIP Products’ “Silly Squeakers” dog chew toys in the USA. The toy resembled the shape and get-up of Jack Daniel’s whiskey bottles, but featured an image of a dog and “Bad Spaniels” instead of “Jack Daniel’s”, along with “The Old No. 2 on your Tennessee Carpet” instead of “Old No. 7 Brand Tennessee Sour Mash Whiskey”.
Jack Daniel’s whiskey VIP Products’ Silly Squeakers dog toy
Jack Daniel’s demanded that VIP Products stop selling the Bad Spaniels product. VIP Products responded by issuing proceedings seeking a declaratory judgment that the Bad Spaniels product did not infringe or dilute Jack Daniel’s trade marks. Jack Daniel’s barked back with counter-claims for infringement and dilution.
After a succession of decisions and appeals, in a unanimous decision issued this year by the US Supreme Court, the Court found VIP Products was not entitled to rely on the First Amendment as a defence for parody products that use trade marks of another party as source-identifiers, and held that the likelihood of confusion test still applies for determining infringement. The case is now pending remand for further proceedings.
It remains to be seen how squeaky-clean VIP Products’ other parody chew toys are, including its “Cataroma Extra”, “Barkparty”, “Smella Arpaw”, “Doggie Walker”, “Jose the Perro” and “Mountain Drool” products.
Until Next Year
We wish you a safe and happy festive season!
Thanks to Minerva Peters and Priya Prakash for their assistance with preparing this article.