A “Sandwich” Short of a Picnic

The Trade Marks Office’s recent decision to register the sandwich inventor’s name as a trade mark has given rise to the age old question of whether “a rose by any other name would smell as sweet”… or in this case a sandwich.

The Applicant, who runs an independent café in [southern] NSW, sought registration of the name JOHN MONTAGU. in class 43 for cafés in November 2014.

The Opponent, a descendant of Lord John Montagu the fourth Earl of Sandwich – dubbed the father of the sandwich, currently owns and operates a variety of chain restaurants primarily in the United States of America and the United Kingdom. The Opponent had registered a number of trade marks in several jurisdictions including MONTAGU in Australia in class 43. and it was on this basis that the Opponent sought to challenge registration of the Applicant’s trade mark application.

The noble origins of the sandwich arose in the year 1792, when the Lord John Montagu, not wishing to leave his table in the midst of a card game at the exclusive London Beef Steak Club, ordered his servant to bring him some salt beef tucked between two slices of bread. In dispensing with the conservative eating rituals of the time, the Lord found himself free to continue to playing cards whilst all the while keeping his hands free from grease and “bothersome implements”. This led to a revolution amongst aristocrats. A cultural movement of sorts, and thus the sandwich as we know it today was born.

In making their decision, the examiner was asked to consider a multitude of grounds of opposition under section 42(b), 43, 44, 58, 60 and 62A which required the examiner to determine whether the Applicant had gone “a rye” in their use of the name JOHN MONTAGU.

The Trade Marks Office found the Applicant had not gone against the grain in their use of the name JOHN MONTAGU in class 43 and the Opponent had failed to establish any of the nominated grounds of opposition. The Applicant led evidence that customers were not aware of the link between the name John Montagu and the origins of the sandwich. The examiner noted that “reputation cannot be assumed, it is a question of fact”[i] and considered whether the Opponent’s circuitous approach to establishing reputation, in that a number of Australians travel to the US and as such would therefore have been aware of their mark. The lack of any such submissions led the examiner to find the Opponent had not provided any direct evidence of its reputation in its mark amongst consumers in the Australian market.

The Applicant’s mark was subsequently registered and costs were awarded in favour of the Applicant.

This decision highlights why it is important for trade mark owners, national and international alike, to establish a presence within the Australian markets and to not rely purely on the reputation of their mark in overseas market as a foundation for adducing reputation in Australia.

————————————

[i] Earl of Sandwich FamilyCo AG v John Montagu Pty Ltd [2018] ATMO 37, at 27.

Authored by: 
Stephanie Manatakis, Lawyer