In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd

In-N-Out Burgers, Inc, an American fast-food business, sought relief against Hashtag Burgers Pty Ltd, an Australian company, alleging infringement of its trade marks, passing off, and misleading or deceptive conduct under the Australian Consumer Law. The Federal Court of Australia heard the case, which involved the use of similar business names and trade marks by the respondents in relation to the sale of fast food items. The applicant, a foreign company with no fixed or permanent business in Australia, claimed that the respondents had used its trade marks and business names with the intention of misleading or deceiving consumers into believing that their goods and/or services were provided by or associated with the applicant or endorsed by it.

The primary legal issues the court had to decide included whether the respondents' use of similar marks and business names constituted trade mark infringement, passing off, and misleading or deceptive conduct. The court also needed to determine if the applicant had a reputation in Australia, whether the respondents intended to mislead or deceive consumers, and if the respondents' marks were adopted to appropriate the applicant's reputation. Furthermore, the court considered an application for a suppression or non-publication order regarding confidential commercially sensitive information.

The court found that the applicant had made out its case of trade mark infringement, passing off, and misleading or deceptive conduct in contravention of the ACL. The respondents, before the incorporation of Hashtag Burgers, were jointly and severally liable for this conduct. After the incorporation of the business, liability rested with Hashtag Burgers, and the two men were knowingly concerned in its contraventions of the ACL that took place after that date. However, the court was not satisfied that the two men were also jointly and severally liable with the first respondent for trade mark infringement or passing-off.

The court granted the non-publication order the applicant sought and fixed the matter for case management in a month's time. The court also made an order restricting the disclosure of confidential information to persons who had provided a confidentiality undertaking in the form agreed by the parties. The order would operate until 4 pm on 26 February 2025, or further order, with an opportunity for the applicant to seek to extend the confidentiality order beyond five years if necessary.