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Pop-up brands

Occasionally I have been accused of having Nostradamus like qualities.

Those who are familiar with our Intellectual Property eNews may recall that last month we gazed into the crystal ball when we commented on the controversy surrounding the retirement of the Chief Wahoo logo by the Cleveland Indians baseball team. The discussion on that topic can be found here.

In that article, we discussed the need to use brands, even as they are discontinued, so that they can be maintained as trade marks. In particular, we said:

Maintaining use of a mark is one of the reasons why brands who have no active presence in Australia but have registered their trade marks here (such as cult US burger chain In-N-Out Burger) have one day pop-up sales. Those events serve the purpose of promoting the brand and also are sufficient to claim use of the trade mark in Australia.

Many of you will also have seen that In-N-Out Burger in fact held another pop-up store promotion in Melbourne on Tuesday. Although the sale wasn’t widely advertised, news of the pop-up restaurant spread quickly. Many people queued for hours and it was reported that the limited offering of 300 burgers (which are all custom made) sold out within 30 minutes of the store opening.

One disappointed customer is reported to have said: “I’m bummed. It’s got this cult-like status and the best milkshakes.”

In-N-Out Burger started making burgers in California in 1948 and still limits itself to a handful of US states. It has gained its reputation largely through making its burgers fresh, cooked-to-order, rather than pre-cooked and waiting for collection.

Australian branding/reputation

It is interesting to note that although In-N-Out Burger has never had an established store in Australia, they currently have more than a dozen trade marks registered or under application in Australia. Some of those marks have been registered and maintained since 1991.

Some may ask, how or why does In-N-Out Burger maintain those trade marks when it has no active point of sale in Australia?

No doubt the registration of In-N-Out’s trade marks and maintenance of the brand is part of a wider marketing strategy. You would expect that In-N-Out Burger either does intend to commence trade in Australia at some stage (no doubt good news for those who were not amongst the lucky 300 yesterday) and/or wants to preserve the brand in Australia so that others can’t begin to use it without their consent – as Burger King (Hungry Jacks) found to their detriment.

Use it or lose it

However, where trade marks are registered they must be used (“use it or lose it”) and can be removed from the register if they are not used for a period of time.

In Australia the threshold for use is quite low and it is likely that the type of event staged by In-N-Out Burger yesterday would meet that test.

In addition to maintaining its trade marks, it seems that In-N-Out Burger is now well known and has arguably developed a reputation in Australia. If that is the case, then any attempt by others to leverage off its reputation may amount to misleading and deceptive conduct under the Australian Consumer Law, or give rise to similar claims. However, it is dangerous to simply rely on reputation, and some famous brands (including Louis Vuitton and Coca-cola) have been unable to prove reputation in relation to some products in recent cases.

Classes of registration

One final thing to note about In-N-Out Burger’s use of their trade marks is in relation to the classes of goods for which they have claimed protection.

Trade marks may be registered in one or more of 45 different classes of goods or services. In-N-Out Burger have registered their marks in various classes including for: Hamburgers and cheeseburgers Restaurant services Bubble gum, chewing gum, chocolate, confections and biscuits Yeast, baking powder, ice cream Clothing, footwear, headgear (which were only applied for in 2016)

To satisfy the test for use, trade marks must be used in relation to all of the goods/services claimed. If not, then the mark may still be left open to removal from the register in relation to the classes where the mark has not been used.

Whilst the pop-up restaurant would satisfy the claims for hamburgers and restaurant services, In-N-Out Burger may also need to consider a strategy for use to maintain its claims for Clothing, footwear, headgear if those are not offered as part of the promotion.

For me, it’s back to the crystal ball with a lotto ticket in the other hand…

What does this mean for your brand?

The few key take home messages include:

  • It is dangerous to rely on reputation alone and brands should be protected by trade mark registration.
  • Identifying a strategy for the protection/use of your brand is vital.

Brands should be regularly reviewed to ensure that the registration remains current. In-N-Out Burger filed new claims for Clothing, footwear, headgear in 2016 as a result of that addition to their product offering. Similarly, all brands should regularly review their offering to market to make sure that their trade mark registrations adequately cover their product offering.

"The content of this publication is for reference purposes only. It is current at the date of publication. This content does not constitute legal advice and should not be relied upon as such. Legal advice about your specific circumstances should always be obtained before taking any action based on this publication."