As it turns out, Hungry Jack\u2019s Pty Ltd (an Australian company owned by Mr Jack Cowin) is, in fact, a franchisee of Burger King Corporation – hence the similar logos. In terms of \u201cproduct, system, trade dress and \u2018look and feel\u2019, Hungry Jack\u2019s outlets [are] virtually indistinguishable from Burger King outlets in the United States\u201d.<\/p>\n\n\n\n
However, if Hungry Jack\u2019s is a Burger King franchise and all the products are identical, it raises the question \u2013 why not just use the established \u201cBurger King\u201d brand as opposed to the new \u201cHungry Jack\u2019s\u201d brand? The answer has to do with the historical \u201cBurger King\u201d trade mark in Australia.<\/p>\n\n\n\n
Well, in 1971, when Burger King Corporation (from the United States) wanted to open its first restaurant in Australia, it found (perhaps to their horror) that the \u201cBurger King\u201d trade mark was already registered and in use by a man named Don Dervan.<\/p>\n\n\n\n
At that time, Mr Dervan had already opened and was operating a chain of restaurants selling burgers and fries under the name of \u201cBurger King\u201d. His Burger King chain opened its first restaurant in 1962, in Adelaide, and by the time Burger King Corporation wished to expand into Australia, Mr Dervan already had 17 restaurants around the country.<\/p>\n\n\n\n
As history tells, Mr Dervan\u2019s trade mark rights in Australia were secured through his trade mark registration and the fact that he had genuinely put his trade mark to use in Australia, even though the Burger King Corporation had a business under the same name in the United States.\u00a0<\/p>\n\n\n\n Attempts were made by the Burger King Corporation to negotiate with Mr Dervan for the sale of his trade mark, but unfortunately for them, he was not willing to relinquish the \u201cBurger King\u201d trade mark. In an interview with Mr Dervan\u2019s daughter, Ms Adrienne Peele, she said that: \u201c[Mr Dervan] told [Burger King Corporation\/the Australian franchisee] you can have everything but the name\u201d.<\/p>\n\n\n\n Having what appears to be no other option, Burger King Corporation provided their Australian franchisee (Mr Cowin) with a list of alternative brand names and Mr Cowin picked \u201cHungry Jack\u2019s\u201d.<\/p>\n\n\n\n As this illustration shows, trade marks are territorial. Registration and use in a business\u2019s home country do not automatically confer trade mark rights in an overseas market.<\/p>\n\n\n\n To prevent yourself from being embroiled in a similar (even if less dramatic) fiasco, it is crucial that you secure your brand\/trade mark in any foreign jurisdictions that you will or have the intention of expanding into.<\/p>\n\n\n\n Not only might there be a local business owner who coincidentally and serendipitously owns the trade mark you wish to register – because sometimes great minds think alike – there is also the possibility of \u201cpassive name pirates\u201d who operate legally but unethically. Check out our other article about the \u201cfish selling bro\u201d for more information about these \u201cpirates\u201d:<\/p>\n\n\n\n Regardless of whether innocent or malicious, these people\/entities can be a massive hindrance to your entry into a foreign market.<\/p>\n\n\n\n Someone who registered your brand ahead of you could charge you an unreasonable price to buy back the use of your brand\/trade mark or they could simply refuse to give it up for whatever reason, forcing you to come up with a totally new brand \u2013 which can be cost-intensive, hinder business valuation, or inefficient from a global marketing point of view.<\/p>\n\n\n\n Having a single brand internationally is not a birthright of any company. It is the fruit of careful international trade mark planning that would allow a business to avoid the troubles faced by Burger King in Australia and provides the business with the ability to leverage centralised content creation and social media outreach through a single, unified brand\/channel.<\/p>\n\n\n\n With that in mind, as long as there is a real possibility that you will enter an overseas market, we highly suggest that you promptly register your trade mark in that jurisdiction.<\/p>\n\n\n\n Read Also: 5 Questions With\u2026Mark Teng, Founding Director At That.Legal LLC<\/a><\/em><\/strong><\/p>\n\n\n\n We can assure you that the cost of registering a trade mark overseas is minimal compared with the cost of fighting an overseas legal battle (say over infringement or invalidation) over your trade mark or buying the said trade mark from whoever owns it there.<\/p>\n\n\n\n This is especially the case right now due to the availability of Enterprise Singapore\u2019s Market Readiness Assistance (“MRA<\/strong>“) Grant:<\/p>\n\n\n\n The MRA provides small and medium enterprises in Singapore with a fiscal boost to take your business overseas. With the MRA Grant, eligible businesses can receive up to SGD 100,000 per new market<\/strong> to aid in overseas market promotion, overseas business development, and overseas market set-up.<\/p>\n\n\n\n As announced in Budget 2021, for a limited time until 31 March 2023<\/strong>, 70% of such eligible costs may be subsidised<\/strong> under the MRA Grant. This amount can definitely go towards the fees involved in registering your trade mark overseas, saving you and your business precious financial resources while increasing your business’s market penetration.<\/p>\n\n\n\n Read Also: What Is The Market Readiness Assistance (MRA) Grant For Overseas Expansion And How To Apply?<\/a><\/em><\/strong><\/p>\n\n\n\n This article is contributed by Mark Teng<\/a>, Executive Director at That.Legal LLC. It was first published on the That.Legal Blog<\/a>. That.Legal can help advance your intellectual property interest through legal processes.<\/strong><\/em><\/p>\n\n\n\n![\"\"](\"https:\/\/dollarsandsense.sg\/business\/wp-content\/uploads\/2022\/06\/Burger-King_Australia.jpeg\")
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Don\u2019t wait to secure your right to access international markets under your brand.<\/strong><\/h1>\n\n\n\n