Trade Marks are a deceptively complex area of the law. The way trade marks are registered, used and enforced can lead to expensive clashes over intellectual property rights.

In this article, we’ll highlight some famous Australian trade mark infringement cases from recent years, as well as the outcome of these matters.

Some of the below matters deal with very interesting legal nuances, like enforcing trade marks across international boundaries, or the distinction between “cheeky branding” and misleading and deceptive branding.

1. Ugg Boots vs UGG Boots

Ugg boots are an Australian fashion staple. In the early 2000’s, The Deckers Outdoor Corporation tried to register a trade mark for “UGG”.

There’s no clear origin for the term “ugg boots”. The first known trade mark was registered in 1971 by Australian surfer Shane Steadman. Steadman registered the name “UGH-BOOTS” and used it to sell his popular sheepskin boots. In 1982, he registered more trade marks for “UGH” and “UGG AUSTRALIA”.

The popularity of ugg boots made it all the way to the United States in 1979 when Brian Smith became the US distributor of ugg boots. Smith later sold his interest to the Deckers Outdoor Company.

Deckers immediately registered trade marks for “UGG” in the US and 25 other countries. Deckers began to defend their trade mark and sent several cease and desist letters to Australian manufacturers by 2004.

In order to fight Deckers, 20 manufacturers joined together to form the Australian Sheepskin Association. The Australian Sheepskin Association contended that “UGG” was a generic term in Australia.

It was ultimately found that the terms “ugg”, “ugh”, and “ug” boots were generic terms in Australia and were the “most natural way in which to describe these goods”. This ruling ultimately allowed Australian brands to continue using the term “ugg boots” when selling their products.

Interestingly, when asserting infringement against US companies, it was held that being generic in Australia has no bearing in other jurisdictions. See more about Deckers vs Ugg boots here.

2. Kylie vs Kylie

It’s Kylie Minogue vs Kylie Jenner. Two of the biggest celebrities of the 21st century.
Their battle began in 2015 when Jenner attempted to register the mark “KYLIE” in the US for advertising services. Minogue’s team filed opposition in 2016, claiming that there would be possible confusion and damages to Minogue’s brand.

Kylie Minogue is an internationally-renowned singer and actress. Working in entertainment, Minogue’s name is a crucial part of her brand, and she maintains several trade marks that reflect this.
The matter was ultimately decided during mediation sessions, so the exact nature of the agreement between Kylie and Kylie is unknown.

What we do know is that the US Patent and Trademark Office rejected Jenner’s trade mark application in 2017. In interviews since, Minogue has hinted that the two reached a private settlement.

3. Katy vs Katie

Katy Perry is one of the world’s biggest pop stars. Katie Perry is an Australian fashion designer.

The two have clashed multiple times – in 2009 and again in 2021.

In 2008, the fashion designer filed a trade mark application for “Katie Perry” in Australia in relation to apparel. Katy Perry’s team missed their opportunity to oppose the registration of Katie’s mark, which led to negotiations between the two parties.

Later that year, Katy Perry applied to register her own name as a trade mark in relation to apparel. Katie’s trade mark was cited as a prior objection and the pop star ultimately had to remove “apparel” from her application.

The pop star’s team made the mistake of ignoring Katie’s trade mark when the singer toured Australia in 2014. During this tour, the pop star sold merchandise including t-shirts and the like, which infringed Katie’s trade mark.

This was the subject of a 2019 lawsuit. Katie Perry alleged that her trade mark was infringed, and the Australian Federal Court agreed. The distributor of Katy Perry’s merchandise was ordered to pay damages to the Australian fashion designer.

The court also ruled that the good faith defence of using one’s own name was not possible for Katy Perry in this instance as Katy Perry did not provide the merchandise in her own name. Rather, she did so through her companies Killer Queen LLC, Kitty Purry Inc. and Purrfect Ventures LLC.

You can read more about the outcome on Katie Perry’s blog.

4. In-N-Out Burger vs In & Out Aussie Burgers

In-N-Out Burger is a popular fast food chain in the United States. If you live in Australia then you may not have heard of them, but they have over 400 stores in the US.

The brand visits Australia now and again to test the waters with pop up shops, which often sell out due to their popularity.

Since the chain seems to be interested in expanding to Australia, they are closely guarding their trade mark. In 2021, this led In-N-Out Burger to sue an Australian business for trade mark infringement.
The Australian business – In & Out Aussie Burgers – operated as a ghost kitchen in and around Brisbane. It had no physical locations. Instead, its products were cooked by participating restaurants, and were only available through food delivery apps.

The lawsuit claims that In & Out Aussie Burgers was previously named “In-N-Out Aussie Burgers”, but changed the name after a cease and desist letter. It’s also noted that Aussie Burgers’ original branding was an “exact copy” of the In-N-Out logo.

In this case, In-N-Out was able to point to instances where the similar branding was creating confusion. They cited negative reviews Aussie Burgers had received that associated them with the American restaurant.
Puneet Ahori – owner of In & Out Aussie Burgers – chose to represent himself in court, saying he lacked the funding to hire counsel. The judge warned him against this due to the technical nature of trade mark law in Australia.

This warning proved to be fair, when Mr Ahori reached a settlement with In-N-Out in 2022. As part of the settlement, Mr Ahori effectively agreed to cease using the In & Out name and logo (and variations thereof).

You can read the full outcome here.

Because of their pop-up events, In-N-Out are able to assert significant reputation and goodwill in their brand in Australia without having a physical outlet.

If you happen to be on the pointy end of a cease and desist letter, it is wise to seek professional advice straight away.

5. McDonald’s vs Hungry Jacks

McDonald’s and Hungry Jacks have enjoyed a friendly rivalry over the years. Both brands have engaged in cheeky advertising that’s designed to target their core competitor.

But this competition has turned into lawsuits on several occasions. Most recently, McDonald’s took Hungry Jacks to court over their decision to introduce the “Big Jack” burger.

In 2020, McDonald’s sued Hungry Jacks, claiming that the “Big Jack” and “Mega Jack” burgers infringed the “Big Mac” trade mark.

In an affidavit, Hungry Jack’s chief marketing officer admitted that the choice of the name “Big Jack” was cheeky and that he knew it would likely be perceived as a taunt by McDonald’s.
Despite this, the judge ruled in favour of Hungry Jacks.

Justice Stephen Burley found that the two trade marks were sufficiently dissimilar, and that there was unlikely to be any confusion among customers. There was no evidence of deliberate deception and Hungry Jack’s was allowed to continue selling its “Big Jack” and “Mega Jack” burgers.

In a minor victory for Macca’s fans, McDonald’s launched an action against Hungry Jacks over claims that Hungry Jacks was being misleading and deceptive by claiming that their burger had “25% more Aussie Beef” compared to an unnamed competitor’s product (ahem: McDonalds).

In reality, the Hungry Jacks burger was bigger, but only by around 13%. Accordingly, Hungry Jacks were found to be engaging in misleading and deceptive conduct and were held to have breached section 18 of the Australian Consumer Law.

Manage Your Trade Marks Effectively With Kings!

Australia’s trade mark system provides excellent protection for your intellectual property. Trade marks represent substantial value to businesses, so it’s important to protect and defend your assets.

The team at Kings are expert trade marks attorneys that work with clients across Australia. We’re an independent firm that specialises in establishing, managing and enforcing intellectual property rights. 

The quirky cases discussed above highlight the complex nature of Australian trade mark legislation.

If you want to protect your branding and ideas, the team at Kings can help. 

Contact us for a confidential consultation about trade marks, patents and design registration.

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Your brand’s unique identifiers are a simple way to connect with customers and grow your business. If those unique identifiers are copied, it can dilute your brand and damage consumer confidence.

This can be prevented by registering a trade mark with IP Australia. Registered trade marks protect the unique signs that are associated with your brands, products and services.

Trade marks are often accompanied by a ™ or ® symbol. In this article, we’ll discuss the difference between an unregistered Trade Mark™ and a Registered Trade Mark®.

Introduction to Trade Marks

Trade marks protect the unique logos that distinguish your brands, products and services from those of others. They’re a form of intellectual property that helps customers identify your products or services at a glance.

Registration grants you the exclusive right to commercially exploit, licence or sell your trade mark.

A registered trade mark can be comprised of any of the following:

• Words
• Images
• Moving images
• Shapes
• Sounds
• Colours
• Scents
• Packaging
• Any combination of the above

Trade marks are registered in relation to classes of products and/or services. There are 45 classes of goods and services to choose from. You must register a trade mark in relation to the classes that the mark will be used in relation to.

It’s crucial to choose the right classes when applying for a trade mark. Selecting the wrong classes may leave you with a trade mark that doesn’t provide adequate protection, or it may  mean your trade mark could be subject to non-use removal application.

Differences Between Trade Mark™ and Registered Trade Mark®

The ™ symbol can be used by anyone to identify an unregistered trade mark. It provides only common law protection. The ® symbol can only be used alongside a registered trade mark.

The ™ Symbol

The ™ symbol stands for “Trade Mark.” It can be used alongside trade marks that are not registered with IP Australia.

In many cases, businesses use the ™ symbol to indicate that:

• A word, phrase or image is being used as a trade mark
• The business intends to register the sign as a trade mark
• The business is in the process of registering the trade mark
• The business may have a legal right to defend its use of the trade mark

It’s common for businesses to apply the ™ symbol as a way to warn others that they intend to claim common law rights in relation to a trade mark. Despite this, the ™ symbol does not indicate any registered legal rights enforceable under the Trade Marks Act. Unregistered trade marks are only enforceable at common law. Enforceability of common law trade marks is much more difficult than with registered trade marks.

The ® Symbol

The ® symbol stands for “Registered Trade Mark.” It can be used alongside a trade mark that is registered with IP Australia. Using the ® symbol indicates to others that the owner of the trade mark has a legal right to use, licence and defend the mark.

There’s no requirement to use either the ™ or ® symbol when displaying your trade marks. Using the appropriate symbol can be an effective way of deterring other businesses from misusing your unique identifiers. Furthermore, using the ™ symbol can be used to accrue distinctiveness for future trade mark applications. 

How to Register a Trade Mark

Registering a trade mark is a relatively straightforward process. You should work with a trade marks attorney when preparing and filing your application. An attorney will ensure your application is successful, and can prevent common issues such as applying for the wrong classes of goods and/or services.

The process is as follows:

1. Determine ownership of the trade mark

Trade marks can be owned by an individual, company, trustee, political body or a government entity. You must determine who owns the trade mark to prevent ownership disputes down the line.

2. Check your eligibility

To be eligible for trade mark protection, the owner must:

• Live in Australia or New Zealand (or have an agent who resides here), and;
• Use, or intend to use within three years of filing, the trade mark for the goods and/or services listed in your application

3. Perform an existing trade mark search

Trade marks must not be deceptively similar to earlier trade marks. Your trade mark attorney will perform a search of existing trade marks to ensure your trade mark is sufficiently different from existing trade marks. 

You may need to alter your trade mark if it is substantially similar to an existing trade mark.

Additionally, trade marks cannot be descriptive of the goods.  For example, a trade mark for “APPLE” could not be registered in relation to apples or apple farming, as it is descriptive of the goods.  In contrast, the same trade mark could (and is) registered in relation to electronics (see: Apple iPhone).

Image Source: IP Australia

4. Gather the required documentation

Your trade mark application needs to be supported by the following documentation:

• Ownership details
• A representation of your trade mark (e.g. an image of your logo)
• The goods and services your trade mark relates to
• Payment of Government Fees

5. Submit your application

Your attorney can now fill out and lodge an application with IP Australia.

6. Receive your outcome from IP Australia

IP Australia will examine your application and provide an outcome. This process generally takes 3-4 months from the filing date.  

If you need to have your trade mark examined earlier for commercial reasons, it is possible to expedite examination and receive an examination outcome within 1 month.  

If your application is successful, it will be accepted and published for 2 months in the Australian Journal of Trade Marks and the Australian Trade Mark Search.

Anyone can oppose the acceptance of your trade mark during this time. If there is no opposition, or if you overcome any opposition, your trade mark will be registered. Once registered, your trade mark is enforceable against third parties.

If your application is unsuccessful, IP Australia will provide an examination report stating the reasons for rejection. Trade mark applications may be unsuccessful because:

• The trade mark is not distinct in relation to the goods and services applied for
• The trade mark is too similar to existing trade marks
• The trade mark is associated with the wrong classes of goods and/or services

You have 15 months to respond to an examination report and overcome any issues raised by IP Australia. It is possible to extend this time via a request to the Trade Marks Office.

How Long Does Trade Mark Protection Last?

Trade marks can live forever, provided renewal fees are paid. Registering a trade mark in Australia provides 10 years of protection from the filing date. You then need to renew the trade mark by paying a fee.  Once the trade mark is renewed, it will remain registered for another 10 years. 

Why Register Your Trade Mark?

Trade marks are useful to individuals and businesses of all sizes. Registering your unique identifiers as trade marks helps to create value within your business and can prevent imitators from damaging your brand, or starting deceptively similar brands.

We recommend registering eligible trade marks for the following reasons:

1. Turn your branding into a business asset

Trade marks can be sold and licenced to others.

Licensing trade marks is a common stream of revenue for many businesses. It can also help a company grow, especially when entering new markets.

You may wish to sell a trade mark if a brand, product or service is being discontinued, or if a business is being sold. Registering a trade mark allows you to assign a monetary value to your unique branding during the sale process.

2. Exclusive right to use, sell and licence your trade marks

The owner of a registered trade mark has the exclusive right to use, sell and licence the mark. This provides excellent control over your brand, which is useful for marketing and to increase brand recognition.

3. Prevent others from registering similar trade marks

IP Australia maintains a database of registered trade marks. This prevents others from registering a trade mark that is identical or deceptively similar to yours in relation to similar goods and services.

4. Protection against unauthorised use

Registering a trade mark grants you the right to prevent others from infringing your trade mark. In practice, this allows you to stop other parties (such as competitors or third-party manufacturers) from using your trade mark without permission, and recover financial damages (including accounts of profit) relating to trade mark infringement.

When Do You Need an Attorney for Trade Marks?

Your business’ trade marks represent substantial value. For that reason, it’s crucial that trade marks are correctly registered and maintained.

We recommend engaging an attorney for all matters relating to trade marks, including:

• Searching existing trade marks (both registered and unregistered)
• Preparing an application for a new trade mark
• Responding to an examination report from IP Australia
• Responding to an opposition
• Renewing trade marks
• Licensing or selling a trade mark
• Infringement proceedings

Trade marks attorneys have an intimate understanding of intellectual property legislation. This is invaluable in protecting your IP and maximising its value.

Working with a trade marks attorney also ensures your IP is secure and is renewed on time, every time. Incorrectly filing trade mark applications or allowing trade marks to lapse can cause substantial losses, so it’s worth engaging a trade marks attorney to stay on top of your IP portfolio.

It is also necessary to engage an attorney if you are seeking to file your trade mark overseas.

Choose the Right Protection for Your Intellectual Property with Kings!

Protecting your intellectual property is one of the most important things you can do. Trade marks allow you to maximise unique branding, which represents substantial value as you grow your business.

The intellectual property attorneys at Kings are experts in trade marks, design rights and patents. We understand the value of your trade marks, so we can ensure your branding receives the protection it needs.

Our attorneys support you throughout the trade mark process. We provide assistance with trade mark clearance searches, preparing and filing applications, responding to objections raised by the Trade Marks Office and managing your IP strategy.

We can also help you with obtaining trade marks in overseas jurisdictions, which is strongly recommended if you intend to manufacture or sell your products or services internationally.

Book a confidential consultation with our team to learn more about registering a trade mark in Australia!

It is typically very difficult, near impossible, to obtain registration for single letter trade marks unless they are heavily stylised. 

For example, some notable single letter trade marks that are heavily stylised and have proceeded to registration in Australia include:

Australian Postal Corporation

480136

Toyota Jidosha Kabushiki Kaisha

509295

McD Asia Pacific LLC

326539

Often, it is a condition of registration that the trade mark includes an endorsement to the effect that the registration of the trade mark shall not give right to the exclusive use of the letter contained therein.

The Trade Mark Examiner’s Manual provides the following commentary: 

Single letter trade marks without “get up” are generally not prima facie capable of distinguishing. The likelihood of other traders needing to use a simple, unembellished single letter in the form of initials or abbreviations is quite high (e.g. the letter M is commonly understood to indicate “mobile” in relation to phones and the letter E is commonly used to indicate a wide fitting in relation to shoes). One letter trade marks, unless represented in an unusual manner, generally possess limited inherent adaptation to distinguish and usually require evidence of use.

As the Trade Mark Examiner’s Manual notes, other traders may need to use a single letter in the form of initials or abbreviations and therefore such trade marks are typically objected to on the basis of lack of distinctiveness (section 41 objection).

However, this commentary, and objections raised by trade mark examiners can be overly pessimistic, especially in view of Wesbeam Holdings Pty Ltd [2006] ATMO 73.

In this Trade Marks Office decision, the Hearing Officer considered the use of the letter “E” in conjunction with the word “purlin” for roofing and beams – (for those not in the building industry, a purlin is a structural beam of a roof). 

During trade mark examination, less weight is placed on components of the trade mark with a descriptive tinge in relation to the goods and services.  In this case, the term purlin.  This leaves the letter “E” to be considered. 

Importantly, the Hearing Officer referred to the Trade Mark Examiner’s Manual and noted a degree of flexibility in deciding on their degree of inherent adaptation to distinguish.  On one hand, if the single letter is highly stylized, it will add a significant amount of capacity to distinguish to a descriptive word.  On the other, a simple letter “A” for instance, will add nothing to the construction (“A” is simply the indefinite article referring to a single member of the class of words immediately following, setting up a construction such as ‘a purlin’.)  In this case, the Hearing Officer held that the letters “Z” or “C” would not add anything to the word “purlin”, as these two letters are in use in the trade as descriptive adjuncts to that word. 

The Examiner noted that the letter “E” does not have any particular connotation in relation to the claimed goods and services.  Adding it to a word descriptive of a piece of building material does add something to the construction.  In this case, the Hearing Officer found that the addition of the letter “E” added enough to the construction of the trade mark to satisfy the Hearing Officer that other traders would not need to add the letter “E” to their products in this field. 

This case highlights that single letters may be registrable in conjunction with descriptive words, where the single letter has no meaning or connotation in relation to the goods and services. 

As a hypothetical example, if the goods of the “EPURLIN” application were in relation to electronic roof beam measuring or similar, the letter “E” would be considered a typical descriptor of “electronic” and the trade mark would face a section 41 (descriptiveness) objection.  Only where the letter has no meaning or connotation to the goods and services may the trade mark be registrable. 

Book a free consultation with the team at Kings IP today to discuss your trade mark. 

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An objection raised by IP Australia under section 41 of the Trade Marks Act 1995 refers to an issue with the applied trade mark being capable of distinguishing the goods and services from the goods and services of others. 

An example of when a section 41 objection may be raised is if an applicant sought protection for the hypothetical trade mark Apple in relation to apples.  Because trade marks are negative rights, if such a trade mark were registered, the owner would be able to prevent others (including apple farmers) from using the term Apple to describe their goods.  This means that other people (apple farmers) who would have a legitimate need to describe their products with the word Apple, would be precluded from doing so.  

As a result, the Trade Marks Act prevents the registration of trade marks that are descriptive of the goods and services for which protection is sought.  Importantly, the operation of this section is relevant where the goods and services for which protection are sought are described by the trade mark.  This is why we may have the registration of Apple in relation to phones, computers, and other electronics.

If you have received a s41 objection, the Trade Marks Office should have undertaken a two-part assessment process. 

• First, they should have arrived at an ordinary signification of the trade mark in the light of the applied for goods and/or services.
• Secondly, they should have determined that there is a likelihood that other traders might legitimately wish to use the trade mark for that ordinary signification in connection with their similar goods or services.

 We will focus on the second part of this test here, that is, the legitimate desire for other traders to use the trade mark. We have reviewed the recent Trade Marks Office decisions and have noticed that linguistically odd phrases that include descriptive components may be found registrable as it is unlikely that other traders would desire to use the trade mark.  

For example, in KJ Ince Pty Ltd [2023] ATMO 139 it was held that FLOWERS FOR ALL was not descriptive of flowers and floristry services. 

In this decision, the Hearing Officer considered at length the use of “for all” to refer to “all people” or “all persons”. 

In particular, the Hearing Officer considered “for all” to be unusual and further, that in this day and age, the use of “for all” could possibly even be considered archaic.  In their reasoning, the Hearing Officer referred to other uses of the term “for all” such as in the Pledge of Allegiance and in The Three Musketeers book.

It would be unusual, in common parlance in Australia today, for people to use the term ‘for all’ to refer to all people. It is far more likely that the expression ‘for everybody’ or ‘for everyone’ would be used. If a person today were, in everyday conversation, to use the term ‘flowers for all’—especially without the additional ‘people’ or ‘persons’—it likely to strike the listener as odd, or be taken as an intentional attempt to use this (potentially) archaic terminology for effect.

While this decision pertained to a revocation action, it involved a fresh consideration of section 41. 

Similarly, in Green Canpump Inc. [2023] ATMO 135, CANPUMP was found not to be descriptive of pumps and pumping related machinery. 

In this decision, the Hearing Officer considered the ordinary signification of CANPUMP and commented that the trade mark may indicate “able to pump”.  With this in mind, the trade mark was considered an oddity, effectively saying to potential purchasers: “here is a pump that is able to pump stuff”. Accordingly, the irregularity rendered the trade mark distinctive. 

These decisions provide an indication that uncommon, archaic, clunky, or odd linguistic phrases may be distinctive, even where there may be descriptive components of the trade mark.  

Give the team at Kings IP a call today to discuss your trade mark.  We can assist you with trade mark matters at all stages.