A Sydney butcher whose shop sign promoting his grill has drawn the legal ire of burger chain Grill’d is sailing close to the legal edge of the trade mark laws, according to a legal expert.
Brisbane intellectual property and trade mark lawyer Nicole Murdoch said while it might sound as though Grill’d has over-reacted by demanding a Sydney butchery remove the sign promoting its grill, the butcher’s use of a similar font and colour as used by the burger chain could justify the protest.
Also, the gourmet butchery in the Warringah Mall on Sydney’s northern beaches is advertising that it sells cooked meats and burgers. So his claim that he is a butcher seems fanciful and convenient, Ms Murdoch added.
Nicole Murdoch, Principal with Brisbane boutique Intellectual Property and Privacy law firm EAGLEGATE Lawyers, which handles matters of Intellectual Property law including Trade Mark law, domain names and general Cyber law, said that the advertising signage spat has lessons for both all small businesses and also holders of descriptive trade marks.
“For a trader to succeed in misleading and deceptive conduct proceedings it must be shown that consumers are drawn into error,” Ms Murdoch said.
“Whilst it cannot be co-incidence that he has chosen the same font and the same colour for his signage, it is difficult to see how consumers would believe they are sitting in a Grill’d restaurant.
“But this might be one of those cases where the trader has made a skilful allusion to another mark, without engaging in infringement of the trade mark or misleading and deceptive conduct. It is telling that he tries to describe himself as a butcher. In reality he is selling cooked meats including hamburgers which is exactly what Grill’d sells.”
Ms Murdoch stated that trade mark holders who have descriptive trade marks cannot always enforce their trade marks. Under the Trade Marks Act, traders are permitted in trade to use words descriptively without infringing the registered trade mark.
“However, defences under the Trade Marks Act do not provide a defence under other laws such as misleading and deceptive conduct laws,” Ms Murdoch said.
“Grill’d complained the butchery’s sign was too similar to theirs, and the prominent use of the word ‘grill’ in the cursive script, and common shaped ‘r’ character, and red font,” Ms Murdoch said, adding that it was confusing shoppers.
The “butchery’s” owner, Adam Stratton, said Grill is a pretty common word, and he didn’t realise you could trade mark a common word like that. Ms Murdoch noted that the lesson there was that it is possible to trade mark common words but when it comes to enforcement the descriptive trade mark may be very difficult to enforce.
Ms Murdoch added that the burger chain, which has asked the butcher to change the sign within two weeks, has also offered to pay for the sign to be changed either by changing the colour or removing the grill sign altogether.