that the pair had acted dishonestly,
it found the evidence supported
the initial finding that it was ‘no
coincidence’ that Kagan and Saliba
had chosen the name Down N’ Out,
and that it had been selected with
full knowledge of the INO trade
marks. The Full Court identified a
number of matters that supported
this finding and which the primary
judge referred to including:
> t he concession that INO
inspired the name;
> t he acceptance that the ‘N-out’
component of the mark was
a direct lift from IN-N-Out;
> K agan and Saliba had knowledge
of the ‘legendary’ INO and Kagan
had attended a pop (up?) event
run by INO in Australia; and
> a request to make the Down
N’ Out logo like the INO logo,
with the subsequent choice of
font, colour and a yellow arrow
reflecting INO’s branding.

Finally, in a blow for Kagan and
Saliba, the Full Court found in
favour of INO on its cross appeal
that the pair were joint tortfeasors
with Hashtag. It found that each
director’s conduct went beyond
the proper role of director so
as to descend into the realm
of ‘close personal involvement’.

This was on the basis that:
a) the pair were the sole
directors of Hashtag;
b) o nly they made decisions as
to Hashtag’s management;
c) t hey alone received the
profits derived from it;
d) t here was no difference between
the individual who operated the
business prior to incorporation
and the way in which they
operated it through the corporate
vehicle after it was formed; and
e) t he pair were knowingly involved
in the company’s wrong doing.

Business owners and brand creators
must walk the fine line between
inspiration and appropriation
when developing trade marks and
branding that are based on those
of another business. Failure to
understand and appreciate the
risks, may lead to a potentially
embarrassing and costly rebrand.

This case also serves as a reminder to
company directors that courts will look
beyond the corporate veil in cases of
trade mark infringement, passing off
and misleading and deceptive conduct.

Anita Brown | Principal
BA LLB MIPLaw GAICD
anita.brown@pof.com.au Inspire March 2021
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