from the trademark-tourism dept
Here we go again. We have talked for years now about famed burger chain In-N-Out and its strategic, and very bullshit, practice of opening up pop-up locations in countries where it does not, and does not appear to plan to, have any real brick and mortar presence. This sort of trademark tourism is not unheard of, of course, but In-N-Out tends to take things to absurd levels. It’s gotten stupid enough that local press outlets in some countries have stopped gleefully writing posts about how In-N-Out is temporarily available and how awesome that is to pointing out exactly what the company is doing to retain trademarks it barely uses to wield against those same countries.
It appears that Australia, one of the original countries in which In-N-Out began pulling this crap, is joining the list of countries that are starting to understand why this is a problem and are wondering aloud what to do about it. It’s been about three years since the company’s last pop-up routine in Australia and they’re back at it again.
It’s not often you’ll see people queue up to enter a pub before 9am on a weekday, but on Wednesday, Sydney’s Coogee Bay Hotel was no ordinary pub. It was, for those who had at least $8 and time to spare, perhaps their only chance to taste American chain In-N-Out Burger for themselves.
So, are the pop-ups, which have, in the past, had as little as 250 burgers available for purchase, merely an exercise in ensuring market research decks are up to date with primary data? Or is the brand sending out smoke signals to the masses that one day it will expand in Australia in earnest? Both options are possible, but neither is likely.
The post goes on to posit instead what we already know: In-N-Out is conducting its hours-long pop-up store operations purely to retain ownership and control of trademarks that it is otherwise not using. Most of these temporary storefronts operate for less than a full business day, so limited are they in operating stock. Let’s be generous and call it a full day, however. And then let’s ask this question: is Australian trademark law really designed such that a foreign company can conduct operations 1 day out of over 1,000 calendar days to retain trademark ownership and that’s all valid?
The post over at the Sydney Morning Herald then asks an intellectual property professor what recourse there is for any of this. Turns out, there absolutely is one!
As Stoianoff notes, Section 92(4)(a) allows the possibility of a trademark to be stripped from its owner even if it’s used within three years (with the period ending one month before the date of filing) prior to an application for its removal.
“They need to be actually able to show that, whatever use has been made … the registered owner has not used their trademark in good faith,” Stoianoff says of those who wish to file an application for trademark removal.
“So I suppose the question becomes one of, well, is this constant popping up every so often a legitimate use or a good faith use, or is it simply a mechanism to try and make sure that Section 92(4)(b) doesn’t operate?”
Given the details around how In-N-Out specifically conducts these popup stores, it’s a question that answers itself. Of course none of this is a legitimate use of a trademark in the country. The percentage of time the company is using it in commerce is so small that it’s measured in fractions of a percent. What are we even talking about here?
So it seems that what is really needed here, at least in Australia, is for someone to challenge In-N-Out’s trademarks on Section92(4)(b) grounds. Given the shift in tone I’m starting to sense from the press, at least, I tend to think that move is coming sooner rather than later.
Filed Under: australia, trademark tourism, trademarks
Companies: in-n-out
