Restaurants in full-blooded burger battle

The Heart Attack Grill in Arizona recently filed a complaint against Heart Stoppers Sports Grill in Florida for, among other things, trade mark infringement and unfair competition.

Heart Attack Grill – “a taste worth dying for” – is a medically themed hamburger restaurant, established in 2005, with a “very distinctive trade dress”.  It serves the Single, Double, Triple and signature Quadruple Bypass Burger and Flatliner fries.  The restaurant has hospital décor.  Patrons are seated in wheelchairs, dressed in gowns with wrist bands listing their orders and served by waitresses dressed as nurses.  The restaurant conducts eating contests and offers free food to anyone over 350 pounds.

According to the complaint, after franchise negotiations with the Heart Attack Grill broke down, the defendants barely skipped a beat, opening the Heart Stoppers Sports Grill in December 2009.  Heart Stoppers has similar get-up, but obviously had their design team under the pump for some new innovations, including “emergency room” and “city morgue” signs, giving patrons their bills in first aid boxes, delivering meals on a cart with an IV bag attached, and using pill boxes as salt and pepper shakers and bed pans as planters.  It sells, among other things, Heart Dogs, the Heart Attacker half pounder, Heart Stopper 3 Pound Killer burgers, Chilli Chest Pain Fries and the Second Opinion sandwich.  Ironically, one of the grounds of complaint is that Heart Stoppers’ “unauthorized use of the accused trade dress and trademarks on ‘healthy’ food menu choices tarnishes Heart Attack Grill’s trade dress and trade marks”!

We wouldn’t like to speculate on their chances under US law.  We think their trade mark infringement claim may well have a pulse if Australian law applied.  On one view “Heart Stoppers” and its product names like “Heart Attacker” are deceptively similar to the “Heart Attack Grill” mark.  After all they do give similar impressions especially when imperfectly recalled.  But is the common word “Heart” enough for deceptive similarity?  And what if Heart Stoppers used those signs in good faith to indicate the kind, quality, quantity or intended purpose of the goods and services(the s 122(1)(b) defence)?  Presumably Heart Stoppers will have no qualms leading evidence that their products really will give you cardiovascular disease. 

Analogous Australian cases involve a competitor using the same name, but different get-up: see “BBQ King Chatswood” and “BBQ King” (in the Sydney CBD) in Anakin Pty Ltd v Chatswood BBQ King Pty Ltd (2008) 250 ALR 620, the Melbourne noodle café case (Osgaig Pty Ltd v Ajisen (Melbourne) Pty Ltd [2004] FCA 1394), and “La Piazza” for Italian restaurants (Monaco Willows Pty Ltd v Greenbax Pty Ltd (1996) 36 IPR 387).  Here, the situation is the reverse.  Heart Attack Grill would need to show that people walking into a Heart Stoppers Sports grill are likely to believe, by mistake, that the two restaurants are associated (the test under s 52 of the Trade Practices Act 1974 (Cth)).  But would that really happen?  Consumers are long familiar with competitive restaurant chains having a similar menu and presentation; the point of difference is the name.

Under either s 52 or the law of passing off, Australian courts have usually not restrained the use of restaurant names that are merely similar (eg “The 50s Fish Caf” was allowed to coexist with the “Last Aussie Fish Caf” in Last Aussie Fish Caf Pty Ltd v Almove Pty Ltd (1989) 16 IPR 376).  Identical names are a different story: in 1982 the US Taco Bell chain was prevented from opening a Sydney CBD store because a Mexican restaurant named “Taco Bell’s” had traded in Sydney since the early 1970s (Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177).  Even in that case, if the “get-up” is so dissimilar, the use of an identical name will not give rise to passing off (eg the use of “TGI Friday’s” by a US themed restaurant chain with distinctive red and white striped décor, compared to its use by “a very ordinary bar in a very ordinary suburban hotel” in Sydney’s outskirts: TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc (1999) 45 IPR 43).  The English “window dressing” cases are helpful, but similar “window dressing” must be coupled with sufficient proximity between the businesses that their reputations overlap and public deception becomes likely (see Plotzker v Lucas (1907) 24 RPC 551). 

Heart Attack Grill is understandably angry that a competitor has taken its ideas and concepts, and is seeking to leverage off its goodwill and reputation.  This sounds like the tort of unfair competition, a claim which hasn’t yet taken off Down Under.

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