What The Wambie Whopper Battle Teaches Us About Trademarks And Social Media

A battle between fast-food giant Hungry Jack's and a single Central Coast burger joint over the use of the name 'Whopper' has ignited social media in recent days. Everyone loves a David versus Goliath narrative, but is it really credible that someone opening a store less than 20 years ago was entirely ignorant of the use of the Whopper brand by Hungry Jack's and Burger King?

Here's the brief background: the Wambie Whoppers store has been operating in Wamberal since the mid-1990s. (The campaign to protect the store claims it has been around for "about 20 years", though the business name appears to have been registered since September 1995, making it 18 years old.)

Earlier this year, the store received a legal letter from Hungry Jack's asking it to stop using the 'Whopper' name. Burger King has sold a burger called the Whopper since 1957, and that has been available in Australia since 1971 via Hungry Jack's, which has operated what amounts to the Burger King franchise in Australia since that time. (There was a legal dispute between Burger King and Hungry Jack's between 1996 and 2001, but stores remained open under both brands during that time.)

The Facebook page for the Save Wambie Whopper campaign has more than 20,000 likes as I write this. Purely to avoid a continued hammering on social media, Hungry Jack's management might well decide to leave this alone and leave that single store in relative obscurity. But to be honest that seems a little unfair to me.

Taking a purely legal view, Burger King first applied to trademark the phrase 'Whopper' in association with hamburgers in Australia back in 1969. The current active registration dates to November 1996.

Searching trademark registries in 1995 was a lot more difficult than it is now, so you might argue that Wambie Whoppers simply weren't aware of the brand when the store was set up. To which my honest reaction would be: really? We're not talking a small chain here, and we're talking the name of a signature product. I find it hard to believe anyone setting up a burger joint, then or now, wouldn't have been aware of the association.

There's an interesting irony here, given that the reason Hungry Jack's was used as the Australian brand name was that the name 'Burger King' was already trademarked by a store in South Australia. Burger King reclaimed it in 1996 when that trademark lapsed.

Lessons for other businesses: when setting up a name, take time to check for competing trademark and business name registrations — it's less hassle in the long run. But if you do end up in a battle, enlist social media to the full. You'll see plenty of support, even if much of it is seemingly irrational.


Comments

    If that is the case and the trademark was registered in 1969, then ASIC shouldn't have allowed the registration of the "WAMBIE WHOPPERS" business name in 1995. Surely some responsibility falls on ASIC to avoid conflicts?

      Though they're searched via ASIC, business name registration happens on state level. IIRC, ultimate responsibility still falls with the business owner (that is, being granted the name doesn't stop others defending their rights). And it does came back to how credible it is to claim that the name Whopper was chosen with zero awareness of how it was already used at that time.

        I reckon in 1995 (see my post below) it is pretty credible that the local store would not be aware of the trademark issues. Cast your mind back to 1995, with no internet, a very much "sleepier" Central Coast, etc. Don't make the mistake of judging brand awareness by today's standards!

          I'm wondering if it's relevant that the legal letter happened around the time the WW operation set up on Facebook. That gave it much more visibility. (Doesn't affect the legal issues, but might explain the timing.)

          Even if you still did not have an Internet connection in 1995, it's still not an excuse. It wasn't hard to find a Hungry Jack's, or know about Hungry Jack's, back at that time.

          I completely agree Misha. McDonald's & Hungry Jacks did not spread out into the provincial centres for many years & although the Central Coast is perhaps close enough to Newcastle or Sydney that the owners may have seen or even been to a Hungry Jacks, it doesn't mean they had. I hadn't even seen a McDonalds or been into one or seen a commercial for them until I was 18 in the 80's & I was probably not aware of Hungry Jacks until much later. To say something huge is a "whopper" is a term we have long used in Australia & I would suggest the term might predate Burger King expanding its business to our shores.

      The trademark register shows that the TM application was a rejected in 1969 on the grounds that the word whopper is generic. A further 6 attempts were made to register the word that did not go through. A number of attempts to register "Home of the Whopper" were also unsuccessful. In 1998 Burger King were able to register a logo for Whopper and subsequently pushed a word mark and a "Home of the Whopper" through by 2002. Burger King did not hold a valid Australian word mark on the term "Whopper" until well after the Wambie Whoppers store changed its name in the early 90s.
      One other thing that the author fails to take into account is that Hungry Jacks was a much smaller franchise set-up in the early to mid 90s than it is today. There weren't many stores outside of Sydney CBD and surrounds in NSW. The first Central Coast stores were Burger King outlets at West Gosford and Tuggerah that opened in 1998.
      Considering that there are other active "Whopper" trademarks that are in the same classes aand pre-date the Burger Kings marks, any decent lawyer would be able to successfully argue that the store's common law mark "Wambie Whopper" is a generic use of the term whopper and get Burger King's mark struck off the register. If you can't successfully trademark the word Ugg or the colour purple in Australia you can't trademark the word whopper. A logo maybe. The word not.

      Last edited 05/11/13 9:04 pm

        One other thing that the author fails to take into account is that Hungry Jacks was a much smaller franchise set up in the early to mid 90s.

        No, I think Angus covered that with:

        Burger King has sold a burger called the Whopper since 1957, and that has been available in Australia since 1971 via Hungry Jack’s, which has operated what amounts to the Burger King franchise in Australia since that time. (There was a legal dispute between Burger King and Hungry Jack’s between 1996 and 2001, but stores remained open under both brands during that time.)

        From memory, the "Jack" of Hungry Jack's basically "licensed" from Burger King the right to sell their products in Australia. By 1996, there were ~150 Hungry Jack's stores in Australia - including stores at Manly and Chatswood (and there were a few in Newcastle by that time, too - I'm sure I remember stopping at one at Raymond Terrace as a kid in the early 90's, there was another in the city, and I think there was one at Kotara, too).

          So, in other words, the HJs BK franchise set-up was less than half the size it is today (362 stores) when the "Wambie Whoppers" shop was renamed. The franchise did not come to the Central Coast until the Burger King putsch.

          "Hungry Jack" is actually another brand owned by Burger King's parent (I believe a pancake store in the US) that the Australian master franchisee choose from a list of brands when Burger King discovered their name had already been trademarked by an Adelaide takeaway (a trademark which remained in force until the mid 90s.

          The first store in NSW was the 640 George Street, Sydney store. HJ's didn't have an expansion quota until renewing their contract after 20 years. They did not expand too quickly in NSW. Most of their eastern expansion was by Burger King in the 1996-2001 period not by Hungry Jacks. For example, within the first couple of years on the Central Coast, Burger King had the West Gosford (resturant), Tuggerah (resturant), Wyoming (resturant), Erina Fair (Food court - now closed) stores and Hungry Jack's opened an Erina (resturant - now closed).

          Last edited 06/11/13 11:05 am

            Yes, there were half the number of stores in 1996, but at that time, McDonald's easily had the most stores in Australia, which was "only" around 300. Jack Cowin was listed in the BRW as one of Australia's richest people starting in 1991.

            There were 17 articles in the SMH alone which made reference to "Hungry Jack's" in 1994 (and this was proior to the Burger King entry, so there wasn't any brand confusin at this point). Back in 1993, they ran an article stating that construction of Hungry Jack's stores were planned in "Sites at Gosford, Ashfield and Hexham, north of Newcastle". I know the Central Coast can exist in a bit of a vacuum at times, but even in the early 90s you could get the Sydney Morning Herald.

            A cursory media search reveals that even international media covered Hungry Jacks's and whoppers back then, with a 1987 article from a New Jersey paper titled "Australia - Home of the Whopper?"

            Look, I'm actually siding with Wambie Whoppers from a moral point of view - I think there's minimal chance someone would confuse their burgers with Hungry Jack's whoppers, and the TM issue is a bit of brow-beating by big money. I'd like to think that the challenge will fail - but HJ's can afford some expensive lawyers, and the legal position is less clear. The point is, your original assertion that Angus made a mistake was demonstrably wrong, and your continued suggestion that somehow Wambie Whoppers could've remained completely ignorant of the existence of HJ's and their burgers because HJ's was - despite being the 4th largest fast food franchise in Australia at the time (behind McDonald's, Pizza Hut and KFC, but ahead of Wendy's, Sizzler and Subway) - too small and insignificant to notice, strains credulity, particularly given the volume of coverage in the media.

            Last edited 06/11/13 3:47 pm

              The earliest list of HJ/BK stores I can find is from 2000. There were 26 stores in NSW. 3 in Sydney CBD, and one each in these Sydney suburbs: Auburn, Bankstown, Bass Hill, Darlinghurst, Hurstville, Kings Cross, Leumeah, Parramatta, Penrith, Seven Hills and Warwick Farm. Outside of Sydney they had stores in Albury, Broken Hill, Coffs Harbour, Dubbo, Gosford West, Hexham, Lismore, Maitland, BP Service Centre Marulan North, BP Service Centre Marulan South, Port Macquarie, Tweed Heads and Wagga Wagga.

              My main point is that it does not matter whether or not Wambie Whoppers knew Hungry Jack's existed when they named their business. At the time Hungry Jack's did not have a valid trademark for "Whopper". HJ's secured the trademark a number of years (1998) after the Wambie Whoppers adopted the name. Wambie Whoppers effectively did nothing wrong in naming their business. The real question is whether HJ's failure to make a move on the Wambie Whoppers store at anytime in the 15 years they have held a trademark on "whopper" invalidates any claim they may have had. Then, I suppose, we could get into an argument about whether a company that has done the market research on nearly a dozen outlets here didn't know about a prominent takeaway situated on one of the coasts main highways.

        "One other thing that the author fails to take into account is that Hungry Jacks was a much smaller franchise set up in the early to mid 90s."

        Actually 1971 in Innaloo Perth, expanding to NSW in 1981

    I think the trademark and patent laws are outdated given how many businesses, products and websites are around these days,
    Companies that have registered trademarks that never used them, other companies that had trademarks and no longer sell products of that kind.
    Would a model like buying broadcasting licences ever work? So an annual payment has to be made to maintain a trademark. This would reduce the incentive for companies to buy them and not use them, for example holding trademarks in countries where they don't operate.

    I don't understand why it would have taken Hungry Jacks so long to put forward this claim. The Wambie whopper has been around for 18 years, known by all on the central coast yet they only now feel the need to say something? What would they have to fear by someone using a "word" that is in everyday colloquial use (the same as the famous "ugg Boot" case). There is no evidence that they are misrepresenting their product as a hungry jacks product (why would they want to?) My favourite part of this whole thing is HJs statement: "Hungry Jack's is obliged to maintain rigorous standards to ensure that when customers order a Whopper they are guaranteed to receive the consistent, high quality burger that is only available at Hungry Jack's." By what standard are they saying their burger is of a better standard than the wambie burger.
    Yes technically BK has the upper hand but wouldn't they also have to show to a dgree if this goes to court that they have suffered some "loss" or that the Wambie burger joint is trying to leach off HJs "good name"?
    At the end of the day, to a normal person like me with no legal knowledge, the simple fact is that it is not a Hungry Jack's Whopper. It is a Wambie Whopper.
    Also as a side point could they legally still call their business Wambie Whoppers but change the name of the burger itself?
    Lastly a search for the trademark shows that although they own the trademark for hamburgers in buns; sandwiches; toasted sandwiches; pitas including filled pitas; cheese burgers; cheesesteaks; chicken burgers; fish burgers; hot dogs; pizzas; pizza rolls; rolls including filled rolls; baked products; snack food consisting principally of pasta, beverages in this class including coffee, tea, cocoa... There is no mention of "beef burgers" a technical point but...

    I can't find the link now but yesterday I read a finding from 1973 where Hungry Jacks appealed a previous decision to deny them the trademark for "Whopper".
    They lost the appeal.
    So the question I have is when did they finally get the trademark?
    Was it before or after Wambie Whopper changed their business name?

      They finally got a mark registered in 1998, after the Wambie Whoppers store was named. In order to get the TM application through they took a different approach. Instead of trademarking the word "Whopper" they trademarked a logo for The Whopper. In the next couple of years the managed to sneak through a word mark for "Whopper" and "Home of the Whopper" by default because they had the logo mark in 2001 and 2002. They can not claim exclusivity on the word whopper, however. There are a couple of other active trademarks in the classes that cover Hamburgers/Food and Resturants/Resturant Services. Hungry Jack's failure to enforce the trademark for 15 years also does not stand in their favour.

      Last edited 05/11/13 9:11 pm

    Angus, you state that because "whopper" was a trade mark that Wambie Whoppers should have known. But Wambie Whoppers has been using that name for 18 years, so why did it take Hungry Jack's that long to realise that whopper was being used? A bit of a double standard, perhaps? And who has the most chance of discovering the other? What if none of the Hungry Jack's stores on the Central Coast were in existence in 1995? Who would be in the right then, with no internet to check?

    Unfortunately for the proprietor of Wambie Whoppers, ignorance of the law (albeit copyright law) is not a valid legal defence in Australia. They should consider rebranding the business or just renaming their signature burger; I would suggest calling it: "The Competition." :-)

    A good lawyer would tear holes in Burger King as the trademark of 'Whopper' is too loose given its an adjective from the English dictionary. Whoppers can also be traced through the Australian vernacular easily through cookbooks and other print describing food as big (all pre-dating product copyright). The illustration on the front of the store alone is enough proof that the 'Whopper' Trademark is not in breached as it depicts the product without the consumer having to associate through words. You have just been Litt up!!!!!

      I'd prefer Specter/Ross to one-two this case. Something about your eyes/ears/teeth/slightly-balding-head that just creeps me out.

      A good lawyer would also be able to research IP listing in Australia, and see that classes the Whopper trademark falls under. A argument for 'too loose' due to its status as a word is fallible.

    I guess the thing here is: who cares? Legally, Burger King/HJ's is in the right - but it makes them look petty and mean to pick on a single burger joint that, let's be honest, probably isn't earning much of HJ's revenue because of their own Whopper burger. It just doesn't make any sense to go after this with a vengeance.

    While the business name Wambie Whopper may have been registered in the mid-90s, from memory as a kid on the Central Coast in the 80s, this was just renaming the store after their most popular/recognisable product. The Whopper burger was well and truly available from that store before the name was applied to the business.

    HJ's probably realised that by not taking action for 18 years was tantamount to implicit approval (the highly likely view the courts would have taken). QED.

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