Would you like fries with that lawsuit?

American burger chain In-N-Out Burger may have bitten off more than it can chew with its lawsuit against an Australian burger chain with a similar name.

Bennett & Philp intellectual property lawyer Nicole Murdoch says In-N-Out, whose occasional pop-up restaurants in Australia attract enormous crowds, is pushing its luck with a lawsuit claiming Sydney burger chain Down N’ Out is mimicking the American firm’s business.

It’s illuminated the little-understood domain of trade marks and their use, which can make or break a business.

Nicole, who is a Director with Bennett & Philp Lawyers, says the In-N-Out chain has been running surprise pop up restaurants in Sydney and Melbourne purely so it can claim it is using its trade mark in Australia.

Bennett & Philp won a landmark trade mark case in 2016 in a case which defined how trade mark holders could lose their marks if not properly used and if a trade mark owner failed to show proper control and use of their mark.

The action was played out as part of an ongoing global trade mark war between rival alcohol brands Wild Geese and Wild Turkey that involved litigation in about 55 cases around the world over 15 years.

Bennett & Philp acted for the Wild Geese Whiskey company, Lodestar Anstalt, against Campari America, the owner of the Wild Turkey trade marks. Campari lost the right to use the Wild Geese trade marks on its products in Australia through not being actively involved in the control of the mark’s use by its licensee.

The landmark 2016 legal IP precedent built on other precedent-setting IP successes Bennett & Philp has achieved since the 1980s with the firm’s IP team featuring in the prestigious Doyles Guide to the legal profession.

Nicole says In-N-Out, even by staging brief pop up restaurants in Australia, could argue it is using its mark here, even though the business has reportedly stated it does not intend to open a chain in Australia.

“If they use the mark within the relevant non-use period, that’s enough to protect their trade mark in Australia. They can show they are here via their pop-ups.”

However, Nicole says In-N-Out may be pushing their luck with a lawsuit against Hashtag Burgers which runs the Down N’ Out burger restaurants in Sydney.

In-N-Out claims the Australian chain is mimicking its business but Ms Murdoch says the American chain does not own the phrase “N-Out” and the Australian name may not be close enough to the US brand.

Federal Court proceedings reportedly commenced late last year with In-N-Out claiming the Australian company is “passing off” or implying its burgers are sold with the American rival’s endorsement.

Nicole says consumers would not be likely to confuse the two businesses given that the words Down ‘N Out have a particular meaning.


Tony Bennett is a Bennett & Philp Lawyers Founding Director and Chairman of the Board at Bennett & Philp Lawyers
Nicole Murdoch is a Director at Bennett & Philp Lawyers