- The American burger chain, In-N-Out Burgers, Inc (“INO“) operates over 300 restaurants in the United States of America.
- INO also advertised its brand through “pop-up events” throughout the world, including in Australia. INO owns a range of Australian registered trade marks, including “IN-N-OUT BURGER“, “ANIMAL STYLE” and “PROTEIN STYLE“.
- Hashtag Burgers Pty Ltd (“Hashtag“), operated various pop-up events and restaurants in Australia, initially under the name “Funk N Burgers” and then “Down-N-Out“.
- Prior to Hashtag’s incorporation, the eventual directors held their first pop-up event in June 2015 called Funk N Burgers where they served “ANIMAL STYLE” burgers. Their pop-up event was held five (5) months after one of INO’s Australian pop-up events.
- From May 2016, the directors began marketing the pop-up events under the name “DOWN-N-OUT” and soon opened a restaurant in Surry Hills.
- Shortly after its opening, INO requested that they stop using the In-N-Out trade marks and change the name and logo of the Surrey Hill restaurant to ensure that it could be distinguished from INO’s restaurants / products.
- Hashtag altered the Down-N-Out name and logo, and instead used “D#WN N’ OUT“. It used this design at the Surry Hills restaurant.
- INO was still not satisfied and brought proceedings claiming trade mark infringement, misleading or deceptive conduct and passing off.
- Were the signs and logos used by Hashtag (the Down-N-Out marks) deceptively similar to the In-N-Out trade marks?
- Katzmann J found that the Hashtag “D#OWN N’ OUT” marks were deceptively similar to INOs:
- the “N-Out” element was a distinctive feature of the INO trade marks and the inclusion of this component in the Hashtag marks was significant in assessing the overall impression made by the two sets of marks;
- The changes made to the Down-N-Out marks were minor and did not affect the sound of the name;
- Hashtag and its directors intended to deceive and cause confusion. The evidence suggested that the Hashtag marks had been intentionally designed to resemble the INO marks to capitalise off INO’s reputation and goodwill. The respondents had tried to conceal their conduct by not properly making discovery;
- INO had a reputation amongst Australian consumers who were capable of being misled by the respondents’ conduct. Her Honour made this finding despite INO not operating any permanent restaurants in Australia; brand reputation can be international.
“What is the line between inspiration and appropriation? That is the question at the heart of the dispute in the present case.”
(Katzmann J at paragraph )
“…The marks must be compared in their entirety or, as Yates J put it in Optical 88 Ltd v Optical 88 (No 2) Pty Ltd  FCA 1380; (2010) 275 ALR 526; 89 IPR 457 at , “as a whole” (Yates J). Furthermore, where a mark consists of a number of elements, the elements must be considered in their context. Context includes “the size, prominence and stylisation of words and device elements used in the mark and their relationship to each other”: Optical 88 at . That said, where a word or words is an essential feature of a registered mark, the incorporation of that word or words in the mark or marks of a rival trader may cause confusion for consumers with an imperfect recollection of the registered mark: de Cordova v Vick Chemical Company (1951) 68 RPC 103 at 105–6; Crazy Ron’s at .”
(Katzmann J at paragraph [79)
The full text is available here: https://jade.io/j/?a=outline&id=712732
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