At the centre of the dispute is Queensland’s OMG Decadent Donuts. It is claiming the NSW-based WTF (Wicked Tasty Food) is using deceptively similar marketing techniques to OMG.
At the core is the acronyms OMG and WTF, both used as a “well-known colloquial phrase which connotes surprise or amazement” and the look and feel of its stalls are similar to those of OMG.
It may sound like two small retailers getting worked up over something relatively minor but the issue is similar to Hungry Jack’s and McDonald’s and the dispute over the name of the Big Jack hamburger.
Gadens partner Rachel Sciascia said in the McDonald’s v Hungry Jack’s case there was a lot of money spent on intellectual property and ensuring no one was encroaching on the other’s territory.
“It gets a lot harder when the smaller guys get involved. It can get quite costly to enforce your intellectual property rights,” she said.
“This is a matter where trademark protection is not necessarily going to stop the conduct because there is quite a difference between WTF Donuts and OMG donuts.”
She said a factor in the case would revolve around the “get-up”, which is the marketing materials like logo colours and style, but also the market itself.
OMG would have to prove that they had a significant reputation in the market where WTF is selling. Then they would have to quantify the damages.
Brisbane intellectual property and trade mark lawyer Nicole Murdoch, from Eaglegate Lawyers said it would be difficult for WTF to claim both the adoption of an exclamation acronym and the distinctive get up of the popup stores and also the layout of the logos was a coincidence.
Murdoch, who does not act for either party, says there are lessons here for all businesses who might be ‘inspired’ by others.
“Adopting similar livery of a competitor can be regarded as copyright infringement, misleading and deceptive conduct and passing off,” she said.
The concerns here are that where small purchases are involved consumers do not take time to study logos or packaging. Therefore they may be more easily mislead in respect of the get-up of small value purchases.
In a further twist to the case the owners of the OMG Decadent Donuts brand, in December, filed a trade mark application to register WTF Wicked Tasty Food for goods including doughnuts.
The doughnut wars continue. No hearing date has yet been set by the courts to hear this matter.