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.
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.
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.
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.
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.
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.
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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