Food fight! Aussie café wins TM dispute concerning the inventor of the sandwich

The Trade Marks Office recently handed down a decision to register a trade mark for the name of the inventor of the sandwich. What follows is a tale of 18th century aristocrats, US chain restaurants and an independent, Aussie café…

Flashback: the year is 1792 and nobleman Lord John Montagu, 4th Earl of Sandwich, is playing cards at the exclusive London Beef Steak Club. It’s a conservative era, so civilised dining among aristocrats typically calls for the use of cutlery. The audacious Earl, however, instructs his valet to fetch him some salted beef tucked between two slices of toasted bread – a notably fork-free dining experience. The Earl’s buddies immediately recognise the convenience of this carb-cloaked culinary delight and soon people began to request “the same as Sandwich” or just a “sandwich”.

And so began the beloved institution that is the sanga.

Flash forward to 21st century: Lord Montague’s descendant, the 11th Earl of Sandwich, owns a chain of restaurants in the US and internationally, trading as the EARL OF SANDWICH, ‘the Opponent’. The Opponent’s menu includes a sandwich called the FULL MONTAGU, a nod to the 11th Earl’s namesake.

Meanwhile, in Woolloomooloo NSW, an independent café, ‘the Applicant’, trades under the name JOHN MONTAGU, also named after the legendary inventor.

Here is where things got messy:

In 2014, the Applicant filed for registration of the following trade mark, the ‘JM mark’, in respect of cafes in class 43:

The Opponent, however, had already applied for registration of the mark MONTAGU in class 43. The Opponent, therefore, opposed the application.[1]

In a classic tale of David and Goliath, however, the Trade Marks Office found that the Opponent failed on all of its grounds of opposition. This was, in part, due to the Opponent’s failure to establish that the MONTAGU mark had acquired a reputation in Australia, before the filing date for the JM mark. Costs were awarded against the Opponent.

If you fancy a fun read (as far as legal decisions go), while you tuck into your BLT, cheese toastie or club sandwich, the decision is accessible here.

[1] Grounds of opposition were made under ss 42(b), 43, 44, 58, 60 and 62A of the Trade Marks Act 1995 (Cth).

Alexis Keating - Lawyer

Alexis Keating, Former POF Attorney

LLB (Hons), BSc, (MIPLaw)

Alexis is an intellectual property (IP) lawyer and registered trade marks attorney. She practises across the full scope of IP rights, including both contentious and non-contentious matters.