In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd (No 2)

• Jurisdiction: Australia Federal only
• Judge: KATZMANN J
• Judgment Date: 05 June 2020
• Neutral Citation: [2020] FCA 772
• Date: 05 June 2020
• Court: Federal Court

FEDERAL COURT OF AUSTRALIA

In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd (No 2) [2020] FCA 772

File number:	NSD 1746 of 2017
Judge:	KATZMANN J
Date of judgment:	5 June 2020
Catchwords:	PRACTICE AND PROCEDURE — appropriate form of injunctions following findings of trade mark infringement, contraventions of Australian Consumer Law, and passing off — application for stay of injunctions, orders for delivery-up and destruction of infringing materials and costs — whether grounds of appeal reasonably arguable — whether appeal would be rendered nugatory absent a stay — whether, absent a stay, respondents would suffer irreparable harm — where no offer of security made by prospective appellants but undertakings given — whether balance of convenience favours prospective appellants — other relevant considerations
Cases cited:	Alexander v Cambridge Credit Corporation Ltd (receivers appointed) (1985) 2 NSWLR 685 Apotex Pty Ltd v ICOS Corporation (No 4) [2018] FCA 1316; (2018) 136 IPR 1 Calidad Pty Ltd v Seiko Epson Corporation (No 2) [2019] FCAFC 168; 147 IPR 386 ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 Maher v Commonwealth Bank of Australia [2008] VSCA 122 Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd [2003] FCA 997 Mitolo Wines Aust Pty Ltd (as trustee of the Mitolo Wine Trust) v Vito Mitolo & Son Pty Ltd (No 2) [2019] FCA 1140; 144 IPR 22 Phillip Morris (Australia) Pty Ltd v Nixon [1999] FCA 1281 Powerflex Services Pty Ltd v Data Access Corp (1996) 67 FCR 65 Red Bull Australia Pty Ltd v Sydneywide Distributors Pty Ltd t/as Sydneywide Bottlers Australia [2001] FCA 1750 Solarhart Industries Pty Ltd v Solar Shop Pty Ltd (No 2) [2011] FCA 780; 282 ALR 43;92 IPR 197 Westaflex (Aust) Pty Ltd v Wood (1990) 18 IPR 168 Wooldridge v Australian Securities and Investments Commission [2015] FCA 349; 106 ACSR 551
Date of hearing:	29 May 2020
Registry:	New South Wales
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Category:	Catchwords
Number of paragraphs:	72
Counsel for the Applicant:	Mr C Burgess with Ms M Evetts
Solicitor for the Applicant:	Baker McKenzie
Counsel for the Respondents:	Mr HPT Bevan
Solicitor for the Respondents:	Automic Group

ORDERS

		NSD 1746 of 2017
BETWEEN:	IN-N-OUT BURGERS, INC Applicant
AND:	HASHTAG BURGERS PTY LTD First Respondent ; BENJAMIN MARK KAGAN Second Respondent ; ANDREW SALIBA Third Respondent

JUDGE:	KATZMANN J
DATE OF ORDER:	5 JUNE 2020

THE COURT ORDERS THAT:

Injunctions to restrain trade mark infringement

1. The first respondent, whether by itself, its directors, officers, employees, agents or otherwise, be restrained from infringing the In-N-Out Trade Marks, being those trade marks bearing Australian Trade Mark Registration Nos. 563986, 563987, 1190205 and 1345820, including, in particular, from using any of the trade marks listed in Annexure A to these orders in relation to any goods or services in respect of which the In-N-Out Trade Marks are registered.

2. The second and third respondents, and each of them, whether by themselves, their employees, agents or otherwise, be restrained from infringing each of the registered In‑N-Out Trade Marks including, in particular, from using any of the trade marks listed in items 1 to 8 and 10 of Annexure A in relation to any goods or services in respect of which the In-N-Out Trade Marks are registered.

Injunctions to restrain ACL contraventions

3. The respondents, and each of them, whether by themselves, their directors, officers, employees, agents or otherwise, be restrained from using the names and logos DOWN‑N-OUT, DOWN N’OUT or D#WN N’OUT, including in any of the forms shown in Annexure A, in connection with burgers or associated food and beverages, and related restaurant and take away services.

4. The second and third respondents, and each of them, be restrained from being knowingly concerned in any use by the first respondent of the names and logos DOWN‑N-OUT, DOWN N’OUT or D#WN N’OUT, including in any of the forms shown in Annexure A, in connection with burgers or associated food and beverages, and related restaurant and take away services.

Injunction to restrain passing off

5. The respondents, and each of them, whether by themselves, their directors, officers, employees, agents or otherwise, be restrained from passing off their business as a business that is associated with the applicant by using the names and logos DOWN‑N‑OUT, DOWN N’OUT or D#WN N’OUT, including in any of the forms shown in Annexure A, in connection with burgers or associated food and beverages, and related restaurant and take away services.

6. Orders 1, 2, 3, 4 and 5 take effect 60 days from the date of these orders.

DNO social media

7. Within 60 days of these orders, the respondents:

   1. take all steps that are necessary to cancel or amend the account name and URL details for the following social media accounts to names and URLs that do not include DOWN-N-OUT, DOWN N’OUT, D#WN N’OUT, “downnout” or “DNO”:

A. Facebook pages:

i. https://www.facebook.com/downnoutofficial/

ii. https://www.facebook.com/downnoutwest/

iii. https://www.facebook.com/downnoutryde/

iv. https://www.facebook.com/downnoutwollongong/

v. https://www.facebook.com/DNOCrowy/

vi. https://www.facebook.com/downnoutHQ/

B. Instagram page

2. take all steps that are necessary to remove all social media posts from the accounts referred to in sub-paragraph (a) that feature any of the DOWN‑N‑OUT, DOWN N’OUT or D#WN N’OUT names and logos, including in any of the forms shown in Annexure A;

3. file and serve an affidavit verifying compliance with the obligations in sub-paragraph (a) and (b) above.

DNO business name registration and domain name

8. Within 60 days of these orders, the respondents:

   1. take all steps that are necessary to cancel their domain name registration for ;

   2. take all steps that are necessary to cancel their business name registration ABN 44 579 781 639 and corporate name Down N' Out Burgers Pty Ltd ACN 625 170 121 or to amend them to names that do not include DOWN-N-OUT, DOWN N’OUT or D#WN N’OUT; and

   3. file and serve an affidavit verifying compliance with the obligations in sub-paragraphs (a) and (b) above.

Delivery-up of infringing material

9. Within 60 days of these orders, the respondents:

   1. deliver to the applicant’s solicitors for destruction, subject to the applicant’s undertaking noted in paragraph 11 below, all physical materials (other than physical documents including financial, taxation, legal, accounting and employment records, created and kept in the course of, or for the purposes of any business, trading or financial arrangements) including but not limited to signage, packaging, promotional material, advertising, brochures, pamphlets, merchandise, stationery and business cards in their possession, custody, power or control which bear or incorporate the names and logos DOWN-N-OUT, DOWN N’OUT or D#WN N’OUT, including in any of the forms shown in Annexure A;

   2. destroy all electronic materials (other than financial, taxation,...