Many years ago, when I first visited Australia, I noticed something strange. I wanted to get some fast food and all the usual suspects (McDonald’s, KFC etc) were available, except for Burger King. Upon closer inspection, however, I found that there was a fast-food joint named “Hungry Jack’s”, whose logo looked suspiciously like the Burger King logo.

I never really gave this much thought until my second visit to Australia in the early 2000s, when I found a Hungry Jack’s restaurant right next to a Burger King outlet. Seeing the eerily similar logos side by side made me curious – job hazard – Isn’t this trade mark infringement? How on earth are these logos co-existing without some fuss being kicked up by either owner?

After some digging and investigation, our team managed to find the answer, and, through this article, we hope to share some of these findings with you, and help you understand what we intellectual property lawyers mean by “trade marks are territorial”.

Great Minds Think Alike

As it turns out, Hungry Jack’s Pty Ltd (an Australian company owned by Mr Jack Cowin) is, in fact, a franchisee of Burger King Corporation - hence the similar logos. In terms of “product, system, trade dress and ‘look and feel’, Hungry Jack’s outlets [are] virtually indistinguishable from Burger King outlets in the United States”.

However, if Hungry Jack’s is a Burger King franchise and all the products are identical, it raises the question – why not just use the established “Burger King” brand as opposed to the new “Hungry Jack’s” brand? The answer has to do with the historical “Burger King” trade mark in Australia.

Well, in 1971, when Burger King Corporation (from the United States) wanted to open its first restaurant in Australia, it found (perhaps to their horror) that the “Burger King” trade mark was already registered and in use by a man named Don Dervan.

At that time, Mr Dervan had already opened and was operating a chain of restaurants selling burgers and fries under the name of “Burger King”. His Burger King chain opened its first restaurant in 1962, in Adelaide, and by the time Burger King Corporation wished to expand into Australia, Mr Dervan already had 17 restaurants around the country.

As history tells, Mr Dervan’s trade mark rights in Australia were secured through his trade mark registration and the fact that he had genuinely put his trade mark to use in Australia, even though the Burger King Corporation had a business under the same name in the United States. 

Attempts were made by the Burger King Corporation to negotiate with Mr Dervan for the sale of his trade mark, but unfortunately for them, he was not willing to relinquish the “Burger King” trade mark. In an interview with Mr Dervan’s daughter, Ms Adrienne Peele, she said that: “[Mr Dervan] told [Burger King Corporation/the Australian franchisee] you can have everything but the name”.

Having what appears to be no other option, Burger King Corporation provided their Australian franchisee (Mr Cowin) with a list of alternative brand names and Mr Cowin picked “Hungry Jack’s”.

Don’t wait to secure your right to access international markets under your brand.

As this illustration shows, trade marks are territorial. Registration and use in a business’s home country do not automatically confer trade mark rights in an overseas market.

To prevent yourself from being embroiled in a similar (even if less dramatic) fiasco, it is crucial that you secure your brand/trade mark in any foreign jurisdictions that you will or have the intention of expanding into.

Not only might there be a local business owner who coincidentally and serendipitously owns the trade mark you wish to register - because sometimes great minds think alike - there is also the possibility of “passive name pirates” who operate legally but unethically. Check out our other article about the “fish selling bro” for more information about these “pirates”:

Regardless of whether innocent or malicious, these people/entities can be a massive hindrance to your entry into a foreign market.

Someone who registered your brand ahead of you could charge you an unreasonable price to buy back the use of your brand/trade mark or they could simply refuse to give it up for whatever reason, forcing you to come up with a totally new brand – which can be cost-intensive, hinder business valuation, or inefficient from a global marketing point of view.

Having a single brand internationally is not a birthright of any company. It is the fruit of careful international trade mark planning that would allow a business to avoid the troubles faced by Burger King in Australia and provides the business with the ability to leverage centralised content creation and social media outreach through a single, unified brand/channel.

With that in mind, as long as there is a real possibility that you will enter an overseas market, we highly suggest that you promptly register your trade mark in that jurisdiction.

We can assure you that the cost of registering a trade mark overseas is minimal compared with the cost of fighting an overseas legal battle (say over infringement or invalidation) over your trade mark or buying the said trade mark from whoever owns it there.

This is especially the case right now due to the availability of Enterprise Singapore’s Market Readiness Assistance ("MRA") Grant:

The MRA provides small and medium enterprises in Singapore with a fiscal boost to take your business overseas. With the MRA Grant, eligible businesses can receive up to SGD 30,000 per new market to aid in overseas market promotion, overseas business development, and overseas market set-up.

This amount can definitely go towards the fees involved in registering your trade mark overseas, saving you and your business precious financial resources while increasing your business's market penetration.

For more information about the MRA Grant, check out our article that delves further into the details:

Conclusion

If you are intending to start or expand a business whether locally or overseas, we are here to help you in protecting your brand – in Singapore and beyond. Don't wait until it's too late and open yourself up to the possibility of regret, drop us a WhatsApp or Email for a free consultation about the protection of your international trade mark rights or other intellectual property assets. #LetsTalkAboutYourChallenge #THATistheway.

This article does not constitute legal advice or a legal opinion on any matter discussed and, accordingly, it should not be relied upon. It should not be regarded as a comprehensive statement of the law and practice in this area. If you require any advice or information, please speak to a practicing lawyer in your jurisdiction. No individual who is a member, partner, shareholder or consultant of, in or to any constituent part of That.Legal LLC accepts or assumes responsibility, or has any liability, to any person in respect of this article.