A win for Grill’d HFC trade mark

Acronyms and initialisms and are frequently used by businesses to make their names more memorable and to distinguish themselves from competitors. Recently, the global fast food chain Kentucky Fried Chicken opposed an application by Grill’d seeking registration of its HFC mark (see decision in KFC THC V Ltd v Grill’d IP Pty Ltd [2023] ATMO 192).  

As many readers will know, the Opponent, KFC, is a fast food chain that notably sells fried chicken, burgers and other food items. The Opponent owns many trade mark registrations including for the mark KFC in classes 29 and 30.

The Applicant, Grill’d, on the other hand, operates a chain of restaurants that specialises in “healthy” and “natural” products. Several of its trade mark registrations incorporate the word “healthy” and in 2020, Grill’d decided to expand its range of products to include healthier fried chicken. This led Grill’d to apply to register the HFC trade mark in respect of various foodstuffs and beverages in classes 29 and 30.

KFC opposed the HFC trade mark on a number of grounds, however, the Trade Marks Office held that none of them were established. In particular, the Hearing Officer considered that the marks KFC and HFC were not substantially identical or deceptively similar.

On the point of whether the marks were substantially identical, the Opponent argued that the marks look and sound substantially identical. It also argued that the marks were conceptually the same, as FC dominates the visual and aural domains and that the Applicant’s use of H in its trade mark, compared to K, does little to distinguish it as K and H are phonetically similar.  

In contrast, the Applicant argued that the first letter of each mark was different and that the marks were initialisms, rather than acronyms, which means that the marks cannot be pronounced as a word but rather each letter must be pronounced individually. The Applicant further submitted that the only commonality between the trade marks was the use of the descriptive letters FC, which in the context of the goods being sold, were an obvious contraction of fried chicken.

The Hearing Officer did not agree that FC was an obvious contraction of ‘fried chicken’ but did agree with the Applicant that the respective marks were not substantially identical.

In relation to deceptive similarity, the Applicant further argued that the marks are conceptually different, with the letter H being a contraction of HEALTHY, versus the letter K being a contraction of KENTUCKY. It also argued that the marks are less likely to be recalled imperfectly since each letter would need to be pronounced individually. The Applicant referred the Examiner to the decision of Australian Meat Group v JBS Australia which involved a comparison of the marks AMG and AMH which the Court found were not deceptively similar. These additional matters persuaded the Hearing Officer to conclude that the HFC trade mark was not deceptively similar to the KFC marks.

This above decision highlights that when considering acronyms as a trade mark, even a small difference may be sufficient to distinguish one mark from another.