Today’s takeover of a Sydney pub might have given you hope the cult US franchise is opening a store Down Under. It’s more likely to be a clever legal tactic than a sign of global expansion.
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.
Should the fast food franchise decide to bolster its fleet of 418 United States stores with a permanent outpost on Australian shores, it’s clear that decision would be warmly received by foodies. But the suits behind the cult brand have been sitting on that knowledge, without acting on it, for more than a decade.
Last year, hundreds of Canberrans waited more than two hours in the blazing February sun for a chance to taste the signature “Animal Style” burger. A week later, the same thing happened in Brisbane; the year before, all menu items sold out in Melbourne within half an hour, and in 2016, Sydneysiders were turned away 30 minutes before a Surry Hills pop-up even opened because it had already sold out.
In-N-Out Burger − which has held various trademarks in Australia since 1993 − has known demand is present Down Under since its first Australian pop-up in 2012. Unlike compatriots Five Guys, Wahlburgers, Hungry Jack’s (FKA Burger King) and Wendy’s, however, a bricks-and-mortar store lasting more than six hours has yet to materialise on our boundless plains.
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.
“They’ve got to try to demonstrate they’re using their registered trademark on a fairly regular basis,” says Professor Natalie Stoianoff, who is the director of the Faculty of Law’s intellectual property program at University of Technology, Sydney.
Similar to New Zealand − which has also hosted various In-N-Out Burger pop-ups since 2013 but is yet to see a permanent restaurant break ground − and most countries in the world, in Australia, Stoianoff highlights, under Section 92(4)(b) of the Trade Marks Act 1995, a three-year period of non-use can make a trademark vulnerable to a competitor’s request for it to be removed from IP Australia’s trademark register.
“So that is a way, I suppose, by constantly having regular pop-ups for certain periods of time, to actually counteract a claim of non-use,” Stoianoff says.
There is a clause that precedes Section 92(4)(b) in the Act, however, and it can cloud the straightforward nature of a trademark lying dormant for three years.
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?”
The difficulty with these applications for removal, Stoianoff says, then comes with establishing the trademark holder’s state of mind, with the burden consequently put on the trademark holder to prove they had a “real and definite intention to use” the trademark.
When put to In-N-Out Burger, representatives for the brand declined to comment on if they intend to open a permanent store in Sydney, or the reasoning behind the frequent pop-ups.
After the brand’s 2016 Sydney pop-up sold out in record time, a spokesperson told 9news.com.au: “We do these pop-ups in various countries to get our name out there and familiarise people with the brand so they know about us when they visit the US … This pop-up is no indication that we are going to open a store in Australia. We are a family owned business and we only operate in six (US) states right now, and all the produce we use needs to be delivered fresh from our distributors.”
In 2020, a Sydney burger chain formerly known as “Down N’ Out” lost an appeal to flip a court decision that forced it to stop using its name and hand over its signs and promotional materials after being sued by In-N-Out Burger for trademark infringement in 2017.
In-N-Out Burger also successfully sued Queensland food delivery “ghost kitchens” that formerly styled themselves as “In & Out Aussie Burgers” in 2021.
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Bronte Gossling is a reporter for The Sydney Morning Herald, The Age, WAtoday and Brisbane Times.
