Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235

Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235

DOWN-N-OUT is deceptively similar to IN-N-OUT BURGER; use by appellants infringed INO's registered trade marks and constituted misleading/deceptive conduct and passing off. Directors were sufficiently personally involved to be joint tortfeasors post-incorporation. Reputation for passing off does not require local business/customers.

Parties
Appellant: Hashtag Burgers Pty Ltd; Appellant: Benjamin Mark Kagan; Appellant: Andrew Saliba; Respondent; Cross Appellant: In-N-Out Burgers, Inc
Jurisdiction
Australia
Judgment Date
23 December 2020
Procedural Posture
Appeal and Cross Appeal / Judgment
Outcome
appeal dismissed; cross-appeal allowed
Legal Topics
Trade Mark Infringement, Deceptive Similarity, Passing Off, Misleading or Deceptive Conduct
Intellectual Property Consumer Law Torts Trade Mark Infringement Deceptive Similarity Passing Off Misleading or Deceptive Conduct

Case Brief

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Parties

Hashtag Burgers Pty Ltd

Appellant

Benjamin Mark Kagan

Appellant

Andrew Saliba

Appellant

In-N-Out Burgers, Inc

Respondent; Cross Appellant

Procedural Posture

Appeal and Cross Appeal / Judgment

Legal Issues

  1. 1 Whether DOWN-N-OUT is deceptively similar to IN-N-OUT BURGER for trade mark infringement under s 120(1) Trade Marks Act 1995
  2. 2 Whether the conduct amounted to misleading or deceptive conduct under s 18 Australian Consumer Law
  3. 3 Whether the conduct amounted to passing off, and whether reputation requires customers/business in Australia

Ratio Decidendi

DOWN-N-OUT is deceptively similar to IN-N-OUT BURGER; use by appellants infringed INO's registered trade marks and constituted misleading/deceptive conduct and passing off. Directors were sufficiently personally involved to be joint tortfeasors post-incorporation. Reputation for passing off does not require local business/customers.

Court Disposition

appeal dismissed; cross-appeal allowed

Orders

  • The appeal be dismissed.
  • The cross-appeal be allowed.