Burger King Corporation v Registrar of Trade Marks

Burger King Corporation (the applicant) sought to register the trade mark "BURGER KING" in Australia. The Registrar of Trade Marks (the respondent) refused registration on the grounds that the mark was not distinctive and was likely to deceive or cause confusion. The applicant appealed this decision to the High Court of Australia.

The primary legal issue before the High Court was whether the trade mark "BURGER KING" was capable of distinguishing the applicant's goods and services from those of other persons, as required by section 26(1) of the Trade Marks Act 1955 (Cth). This involved considering whether the mark was inherently adapted to distinguish or whether it had acquired distinctiveness through use. The court also had to determine if the mark was likely to deceive or cause confusion, as prohibited by section 28(a) of the Act.

Gibbs J. found that the words "burger" and "king" were common English words, and when combined, they described a burger of superior quality or a kingly burger. He reasoned that the mark was not inherently adapted to distinguish the applicant's goods, as it was descriptive of the product itself. However, his Honour considered evidence of extensive use of the mark in the United States and concluded that it had acquired a significant degree of distinctiveness in that market. Despite this acquired distinctiveness, Gibbs J. ultimately held that the mark was not capable of distinguishing the applicant's goods and services in Australia at the time of the application, as the public in Australia would likely perceive it as a descriptive term rather than a trade mark.

The appeal was dismissed, and the decision of the Registrar to refuse registration was upheld.