The trade mark burger wars are heating up again with a move by a Brisbane company to register the business name In-N-Out Aussie Burgers.

In late 2019 US burger chain In-N-Out Burgers opened popup stores much to the delight of Aussies who gleefully queued for juicy burgers in the pre-Covid days without concerns about social distancing.

Trade mark lawyers were clear on why In-N-Out had opted for popup stores rather than traditional brick and mortar stores: In-N-Out wanted to establish a presence in Australia without commitment to a brick and mortar store.

The effect of the popup stores was to establish use of the In-N-Out trade mark in Australia so the In-N-Out trade marks could not be removed from the register for non-use. Importantly it also sent a message to other traders, that the In-N-Out name was protected.

But that message was lost on some. A local Brisbane business, Rich Asians Pty Ltd, with no obvious connections to In-N-Out Burgers has now registered the business name In-N-Out Aussie Burgers. It is a common misconception in business that a business name registration entitles a person to use the name regardless of other laws.

We expect the American In-N-Out company to defend its trade marks, which apply in Australia even though the chain does not have brick and mortar shops here.

The new player, Rich Asians Pty Ltd of Brisbane, may have registered the business name In-N-Out Aussie Burgers, but a mere business name registration does not provide a defence to trade mark infringement.

In fact the In-N-Out name is already taken by the American chain, which has more than 350 outlets in the US.

Little is known about who is behind the Rich Asians Pty company, whose Principal Place of Business Address is given as Chermside in Queensland, although it has a number of food-related business names registered.

Trade mark infringement occurs where a person, without authority, uses a deceptively similar or substantially identical mark on the goods or services of a trade mark registration. Whilst it is possible Rich Asians Pty Ltd are not intending to use the business name, it seems unlikely. It also seems unlikely it is not intending to use the business name on burgers.

There are also provisions within Australian trade mark law to protect famous marks. Thus Rich Asians Pty Ltd may face trade mark infringement claims regardless of the actual goods and service offerings.

On the face of it, the humble hamburger may be regarded as a simple quick meal, but the burger is the “face” of a fast food industry worth countless millions of tasty dollars. The fact Brisbane and Gold Coast burger enthusiasts queued for hours last year to sample the American In-N-Out’s famous burgers, shows how valuable the brand is to the company.

Trade marks are not “set and forget” regimes. You have to use your trade mark or control its use, and if not, it can be removed from the trade marks register for non-use. If In-N-Out America use the mark within the relevant non-use period, that’s enough to protect their trade mark in Australia. They can show they are using the mark via their pop restaurants attracting huge crowds. Last time it ran brief pop up restaurants in Brisbane and the Gold Coast, for just three hours each. That’s enough to protect their mark.

This is a space worth watching. As far as burger wars go, this is a case where the side serve may be a lawsuit.

A link to the business name registration can be found here.

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