Would you like rights with that? The real reason behind In-N-Out’s periodic pop-ups?

In-N-Out has again given bloggers and Instagrammers heart palpitations by opening a pop-up restaurant in Sydney for ONE DAY ONLY, leaving burger lovers from other parts of the country (including the author of this article) seething with jealousy — something that doesn’t often happen when non-Sydneysiders think of Sydney. By the way, if you’re reading this and interested in wrapping your hands around one of those (allegedly) very tasty burgers, you’re far too late.

This is not the first time that the legendary burger restaurant from the United States has popped in and popped out of our country quicker than you can say “four double doubles, animal style please, and my friend will have the same”. Australia is also not the only country to have been graced by the presence of the unannounced In-N-Out pop-up. Similar events have been held in Tokyo, London, Shanghai, Auckland, Singapore, Manilla –- the list goes on.

Is there any reason for this, besides the near-sadistic satisfaction that In-N-Out management must feel from teasing millions of people at a time with the idea that they could quite easily open a permanent restaurant in any one of those cities and have demand that other restaurants could only dream of, but ultimately choosing not to? The answer to that is – yes, we think so.

Under the trade mark law of Australia, Japan, the UK, EU, China, New Zealand, Singapore, the Philippines – and most countries and jurisdictions around the world, a trade mark registration can be cancelled if the mark has not been used within a certain period of time. The period of time and the process involved in a non-use revocation differs between jurisdictions.

In Australia, at any point after 5 years from the registration of a trade mark, a person can file an application to have the registration revoked. If the trade mark owner does not oppose the application and provide evidence that the trade mark has been used at some point within the three year period ending one month before the revocation application is filed, the trade mark will be removed from the register. Were this to happen to all of In-N-Out’s registrations, In-N-Out would be left without any enforceable trade mark registrations in Australia.

In-N-Out own quite a few trade mark registrations in Australia, including for their logo and as a plain word mark (“IN-N-OUT BURGER”). These trade marks are registered in respect of a range of goods and services – including hamburgers, cheeseburgers and beverages as well as restaurant services.

Given that In-N-Out don’t operate a permanent restaurant in Australia, its trade mark registrations would be vulnerable to a revocation application if they weren’t used within any three year period. If the registrations were cancelled, a crafty person could come along and apply to register trade marks which are identical to the In-N-Out marks, and theoretically start their own bootleg In-N-Out restaurant. Or, if our hypothetical burger pirate were less interested in making burgers and were of questionable moral fortitude, they could effectively hold In-N-Out to ransom. This wouldn’t quite be as easy as it sounds, however. Trade mark applications filed by the imposter can be opposed on the basis of the mark already having a reputation in Australia (which, based on the demand for the pop-up restaurants, is pretty clear), or on a number of other grounds (including that the applications were filed in bad faith).

There would be some avenues of recourse that could be taken by In-N-Out even if they were to lose the registrations, but this would require reliance on the Australian Consumer Law prohibitions against misleading and deceptive conduct, and the tort of passing off (neither of which are as easy to enforce as trade mark infringement). The real risk is the damage that could be done to the In-N-Out brand if the registrations were to be lost.

In Australia and New Zealand, the threshold required to defeat a non-use application is quite low. Certainly, evidence of selling burgers and operating a restaurant, even if for only one day, would meet this threshold. In-N-Out would therefore on the basis of its pop-up restaurants, be able to defeat any non-use application brought by an opportunistic scallywag. This might not be the case in other jurisdictions – particularly in the EU, where the threshold is much higher.

Having Australian trade mark registrations is not uncommon with big-name restaurants who don’t operate a physical restaurant in Australia – I’m looking at you, Shake Shack (who despite having existing Australian registrations, filed a new trade mark application for food services in 2016 – you heard it here, first). Other examples of U.S. based fast food chains who own Australian trade marks without operating Australian restaurants include Chipotle Mexican Grill, Five Guys and Chick-fil-a (would that be Chick-fil-et over here?)

In the unlikely event that anyone from In-N-Out, Shake Shack, or any of the aforementioned fast food restaurants reads this, I’d just like to give some free advice – trade mark rights are federal and apply Australia-wide, so it wouldn’t make a difference whether the pop-up restaurant is in Sydney or, say, Brisbane. And us Briswegians can queue with the best of them. See you some time in the next three years?