Food delivery and Trademark

Noel Kim    19 Jun 2019

Australia, unlike South Korea, does not have an active food delivery culture. However, most recently, as food delivery businesses start to thrive, it is common to see people on bicycles or cars carrying delivery food. The most well-known food delivery companies are Deliveroo, Foodora and Uber Eats. These companies enter into contracts with various restaurants and once consumers place an order through the company’s subsequent channels such as their website or mobile app, the delivery person picks up the food from the restaurant and delivers it to the relevant location. During this process, the delivery companies receive a commission from each restaurant and the delivery person takes that extra charge paid for the food.

As the global delivery market grows and competition increases, delivery companies are now trying to secure as many restaurants as possible. However, companies begin to overdo themselves.

In the Chicago Tribune in America, Chicago-based restaurant Burger Antics, has filed a lawsuit against the delivery company DoorDash. The issue was that DoorDash uploaded Burger Antics’ menu and name on their website without obtaining prior consent and advertised as though their food could be delivered to customers. According to Burger Antics, they never provided food delivery services and were informed one day by a customer that they had been delivered food that was cold. 

DoorDash, a company based in the United States, partners with more than 600 restaurants and delivers foods using delivery personnel called  dashers. The issue is not just a simple mistake identified in the above mentioned case of Burger Antics but the fact that they have a fixed business mindset of “whatever”. Once they posted menus of several restaurants on their website, because of issues that arose in the above context, they have slowly started to take them down. In November 2014, In-N-Out, a well-known burger chain based in California, filed a lawsuit against DoorDash to immediately stop the unauthorised use of their logo and menu. The case was settled by agreement between both parties. However, we suspect that DoorDash paid a considerable amount of compensation.

What would happen if such a situation occurred in Australia? First of all, there would be an infringement of trade mark rights, copyright laws and a violation of consumer law. Readers of this article who own and run a restaurant-style business should check to see if their restaurant name and menu have been used without their permission.

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Noel Kim

Noel Kim


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Australia Trade marks Law

Australia’s intellectual property office, IP Australia (www.ipaustralia.gov.au), and New Zealand’s intellectual property office, IPONZ (www.iponz.govt.nsw), are their respective countries’ intellectual property rights administrative agencies. IP Australia and IPONZ administer applications for trade marks and handle oppositions to intellectual property rights. They also process other administrative work such as renewal, transfer and cancellation of trade marks. Australia/ New Zealand laws allow trade marks for characters, numbers, figures and combinations of these, and trade marks can also include smell, sound and colour. A registered trade mark is valid for 10 years, and upon payment of renewal fees, may be renewed on a 10-year basis. However, even a registered trade mark, if not used for a certain period, may be cancelled by opposition from a third party.  Trade marks can be registered in one of two ways: the first is to register the trade mark internationally through the Madrid Protocol; the second is to register through IP Australia/IPONZ. A product or service to be trade marked must be classified in accordance with the International NICE classification which lists 1 to 45 classes. The procedure to register trade marks in Australia and New Zealand are as follows:  Investigation of previous trademarks.        -  A review of possible infringement and registration of the same or similar trade marks.    2. Trade mark application        - The applicant’s English name, address, trade mark and designated products/services.        - Details of priority right if claiming under a treaty.        - English translation of the trade mark if not written in English.        - For applications in New Zealand - whether the trade mark will be used in New Zealand.    3. Assessment of the trade mark application        - Takes up to 4-5 months from the date of application (can apply for expedited examination in cases of emergency).        - For applications in New Zealand, takes 3-4 weeks from the date of application.        - Review whether there have been conflicts with prior trade marks, distinguishing features of the trademark, etc.        - If any reason for rejection has been identified, an initial report of the examination will be issued and the applicant will have 15 months           from the date of the report to respond to that.        - For application in New Zealand, the applicant must respond to the rejection within 12 months from the date of the initial report.        - When applying for a trademark in Australia/New Zealand through the Madrid Protocol, if an examination report has been issued,           an agent must be appointed in Australia/New Zealand for the purpose of responding to the rejection.      4. Application notice and objection        - Upon the satisfaction of all requirements, notification will be advertised on the public notice board for two months.        - For applications in New Zealand, the public notice will continue for 3 months.        - If an objection is filed within the deadline, a separate objection procedure will be carried out.     5. Registration of trade mark         - If there is no objection, the registration of the trade mark will be completed and a certificate of registration will be issued electronically            (in a PDF format).         - The validity of the trade mark is for 10 years (can be renewed every 10 years). An owner of a registered trade mark is entitled to the exclusive use of the trade mark in Australia/New Zealand. Furthermore, it is necessary to conduct an investigation for existing trade marks to avoid infringing on others’ trademark rights when entering the Australian/New Zealand market. If the trade mark you wish to use is registrable, it is best to register it as soon as possible in order for it to be protected. Registering a trade mark will prevent future infringement on the trade mark rights by other competitors. In addition, upon the registration, customs in Australia and New Zealand can seize products being imported if a registered trade mark is infringed. Registered trade marks can use the ® symbol which gives consumers an exclusively protected brand image. Subsequently, a registered trade mark is a property asset which can be renamed, transferred and licensed. Finally, when attracting investment funds from international banks, investors or governments, there are often cases in which it would be advantageous to register your trade mark in the respective country you are considering entering the market in.

Who has right to give names?

A final uphill path at the corner of the road leading from Seodaemun District in Seoul to Ujeongbu is called Miari Hill. As a result of the Korean war, there were many killed in battle between the South Korean and the North Korean national armed forces at that time and thereby the entire hill was covered with blood, which became the background story of a song called “Heartbreaking Miari Hill”.   In the past, the Miari Hill could be easily seen through the signboards of the Astrologer and Psychics at the both sides of the road when walking along the Dongsomun Road from the entrance of the Sungshin Women’s University. Usually, there were many fortune telling houses which used Taro-readings, the Five Elements or even supernatural powers to tell fortunes and destiny of human-beings, and one of them was a shop which helped with naming of a newborn baby or a company to flourish.   Although the times have changed and many fortune telling houses at the Miari Hill have consigned to memory thereby, many people still use the naming services online. Published in 1991 by the writer, WooRam Lee, the book titled “Who has a right to give names?” introduces that one’s destiny is shaped according to a high-level of sound energy of the names we commonly call each other. Although it is hard to ascertain whether proven scientifically, naming a person’s name, which is to be used in the rest of one’s life, is inconsequential in all ages.   Even for start-up businessmen or those who launch their new goods or services in the market for the first time, naming can be concerning. In business world, a name becomes a front, a name card, an advertisement and  a product cover for a company. Also, it becomes a first sound to be heard when it becomes the face of a company and someone calls up.  If the company’s name is unremarkable, it would hard for it to differentiate itself from the other competitors in the same industry. Especially, it is hard to remember when it is hard to pronounce. A name which is visible, easy to pronounce as well as related to goods or service of a company would be the best. In addition, it would be even better if the name pertains the business founder’s vision and values.   Although it is up to individuals to choose any visually aesthetic logo or a general noun or combine with the name of a local district, it is to be noted that there are legal duty and obligations when using a name for a commercial purpose.  Many people are often confused with the conceptual differences among a company name, a business name, and a trade mark. All of these have legally different meanings and the governing laws are also all varying. For instance, according to the Business Names Registration Act 2011 (Cth), any entity doing business without registering its business name in Australia would be fined up to maximum $ 3300. However, there would be an exception to that if the entity is  a sole trader using his own name or an incorporated body using its company name. One thing to note is that there would be no automatic legal right as to the business name even if registered. That is, it would be difficult for a company to prevent the other competitors from using the same or similar to its registered business name. Thus, in order to prevent this, a company should register its business name as a trade mark.  Conversely, if another competitor providing the same types of goods and service as the company has already registered the company’s business name as its trademark, the company could be sued for trade infringement according to the Trade Marks Act 1995 (Cth) when continuing to use the business name. Also, it can be punished in public interest under the Australian Consumer Law when fabricating  a county of origin in its label, misrepresenting the source of goods, misleading or deceiving its consumers.  There have been some clients who initially thought there would be no problems as long as they register their business names at the ASIC but ended up coming for help when receiving warning letters one day after operating their business over time. They must be distressed for having to change their business names overnight after using them for a few months or even years. Although it is important for a company to use a nice-looking business name, it is highly recommended for the company to ensure not to be involved in any legal conflicts by undertaking a thorough preliminary investigation and registering its business name as a trade mark if possible.