KFC and Grill’d face off in the ‘HFC’ broiler battle
5 mins reading time
A sizzling legal showdown erupted as KFC and Grill’d clashed over the crispy chicken crown. KFC argued that Grill’d and their HFC (healthy fried chicken) were treading on the heels of KFC’s iconic “KFC” (Kentucky fried chicken) trade mark.
The great fry-off begins
In the case of KFC THC V Ltd v. Grill’d IP Pty Ltd [2023] ATMO 192, KFC aimed to protect its ‘finger lickin’ good’ reputation, arguing that “HFC” was more like a mess than a recipe for success in the fast-food trade mark world. KFC opposed the registration of the “HFC” trade mark by Grill’d, in a legal stoush that was no chicken feed.
KFC argued that “HFC,” standing for “Healthy Fried Chicken”, was substantially identical or deceptively similar to its own “KFC” trade mark. KFC contended that despite the difference in the initial letter, “H” and “K” were phonetically similar.
Grill’d, on the other hand, argued that the marks were distinguishable as they were initialisms, not acronyms, and each letter was pronounced individually – ‘kay eff see’ and ‘aitch eff see’ or (controversially ‘haitch eff see’) (at [19]). Grill’d asserted that the only common element, ‘FC’, was a descriptive contraction of ‘fried chicken’, and the conceptual differences between ‘H’ for HEALTHY and ‘K’ for KENTUCKY were significant.
The decision
The Hearing Officer did not find substantial identity or deceptive similarity between “HFC” and “KFC”, citing the case of Australian Meat Group Pty Ltd v. JBS Australia Pty Ltd [2018] FCAFC 207 as precedent that consumers are accustomed to distinguishing acronyms based on slight differences. The Hearing Officer agreed with Grill’d’s submission that the marks would be said letter by letter but did not agree that the ‘FC’ was an obvious contraction of ‘fried chicken.’ Nonetheless, the Hearing Officer carved out a decision, ruling that ‘HFC’ and ‘KFC’ were not substantially identical.
In the alternative, KFC argued that Grill’d had acted in bad faith, because ‘it was designed to acquire a springboard or advantage by exploiting the reputation of the KFC Trade Marks’. (at [49]) KFC referred to its substantial reputation in the KFC marks in relation to ‘fried chicken food products.’ KFC also submitted that Grill’d’s use of similar colouring of red and white stripes, like the KFC packaging, as well as a parody of KFC’s Colonel Sanders (the KFC indicia).
In response, Grill’d submitted that this was a form of comparative advertising, stating that ‘(t)he Applicant’s advertising is a cheeky, parodic comparison between the Opponent’s fried chicken and the Applicant’s healthier alternative’. Comparative advertising is expressly allowed by s122(1)(d) of the Trade Marks Act 1995 (Cth) and therefore would constitute “acceptable commercial behaviour”. Additionally, Grill’d pointed to KFC’s own use of other trader’s slogans, bringing attention to an advertising campaign of using McDonald’s trade mark “I’m lovin’ it” and KFC products on mobile billboards parked outside of McDonald’s stores in the UK. Grill’d submitted that “it is not dishonest, or even unusual, business practice—particularly in the Quick Service Restaurant industry—to engage in advertising that brings another trader to mind in an amusing way, even if that annoyed the other trader” (at 57).
Again, the Hearing Officer agreed with Grill’d, finding that the application to register the trade mark had not been made in bad faith.
Key takeaways
The decision emphasises that while acronyms can be memorable, the scope of trade mark protection for them is narrow, and some similarities, even with just one letter difference, are expected and tolerated, in the absence of demonstrated bad faith. Ultimately, the case proved that in the trade mark world, just like in fast food, a little ‘K’ and ‘H’ can go a long way.
It further highlights that if you are going to allege bad faith as on objection to registration of a trade mark, you mustn’t point the finger at behaviour you have been involved in yourself. In short, if you can’t stand the heat, you should get out of the kitchen.
We’re here to help
The Macpherson Kelley IP team can assist you with all aspects of trade mark law, from trade mark vetting searches to registration. If worst comes to worst, we can also assist in any infringement disputes.
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KFC and Grill’d face off in the ‘HFC’ broiler battle
A sizzling legal showdown erupted as KFC and Grill’d clashed over the crispy chicken crown. KFC argued that Grill’d and their HFC (healthy fried chicken) were treading on the heels of KFC’s iconic “KFC” (Kentucky fried chicken) trade mark.
The great fry-off begins
In the case of KFC THC V Ltd v. Grill’d IP Pty Ltd [2023] ATMO 192, KFC aimed to protect its ‘finger lickin’ good’ reputation, arguing that “HFC” was more like a mess than a recipe for success in the fast-food trade mark world. KFC opposed the registration of the “HFC” trade mark by Grill’d, in a legal stoush that was no chicken feed.
KFC argued that “HFC,” standing for “Healthy Fried Chicken”, was substantially identical or deceptively similar to its own “KFC” trade mark. KFC contended that despite the difference in the initial letter, “H” and “K” were phonetically similar.
Grill’d, on the other hand, argued that the marks were distinguishable as they were initialisms, not acronyms, and each letter was pronounced individually – ‘kay eff see’ and ‘aitch eff see’ or (controversially ‘haitch eff see’) (at [19]). Grill’d asserted that the only common element, ‘FC’, was a descriptive contraction of ‘fried chicken’, and the conceptual differences between ‘H’ for HEALTHY and ‘K’ for KENTUCKY were significant.
The decision
The Hearing Officer did not find substantial identity or deceptive similarity between “HFC” and “KFC”, citing the case of Australian Meat Group Pty Ltd v. JBS Australia Pty Ltd [2018] FCAFC 207 as precedent that consumers are accustomed to distinguishing acronyms based on slight differences. The Hearing Officer agreed with Grill’d’s submission that the marks would be said letter by letter but did not agree that the ‘FC’ was an obvious contraction of ‘fried chicken.’ Nonetheless, the Hearing Officer carved out a decision, ruling that ‘HFC’ and ‘KFC’ were not substantially identical.
In the alternative, KFC argued that Grill’d had acted in bad faith, because ‘it was designed to acquire a springboard or advantage by exploiting the reputation of the KFC Trade Marks’. (at [49]) KFC referred to its substantial reputation in the KFC marks in relation to ‘fried chicken food products.’ KFC also submitted that Grill’d’s use of similar colouring of red and white stripes, like the KFC packaging, as well as a parody of KFC’s Colonel Sanders (the KFC indicia).
In response, Grill’d submitted that this was a form of comparative advertising, stating that ‘(t)he Applicant’s advertising is a cheeky, parodic comparison between the Opponent’s fried chicken and the Applicant’s healthier alternative’. Comparative advertising is expressly allowed by s122(1)(d) of the Trade Marks Act 1995 (Cth) and therefore would constitute “acceptable commercial behaviour”. Additionally, Grill’d pointed to KFC’s own use of other trader’s slogans, bringing attention to an advertising campaign of using McDonald’s trade mark “I’m lovin’ it” and KFC products on mobile billboards parked outside of McDonald’s stores in the UK. Grill’d submitted that “it is not dishonest, or even unusual, business practice—particularly in the Quick Service Restaurant industry—to engage in advertising that brings another trader to mind in an amusing way, even if that annoyed the other trader” (at 57).
Again, the Hearing Officer agreed with Grill’d, finding that the application to register the trade mark had not been made in bad faith.
Key takeaways
The decision emphasises that while acronyms can be memorable, the scope of trade mark protection for them is narrow, and some similarities, even with just one letter difference, are expected and tolerated, in the absence of demonstrated bad faith. Ultimately, the case proved that in the trade mark world, just like in fast food, a little ‘K’ and ‘H’ can go a long way.
It further highlights that if you are going to allege bad faith as on objection to registration of a trade mark, you mustn’t point the finger at behaviour you have been involved in yourself. In short, if you can’t stand the heat, you should get out of the kitchen.
We’re here to help
The Macpherson Kelley IP team can assist you with all aspects of trade mark law, from trade mark vetting searches to registration. If worst comes to worst, we can also assist in any infringement disputes.