Australia: Taking a punt on trade mark enforcement: The contrasting fates of Crownbet and Miss Universe 2009

Gambling on a name:

Between late 2017 and early 2018, the online betting platforms William Hill Australia and Crownbet were both acquired by a Canadian-listed company and combined to become the third largest online betting platform in Australia, after Sportsbet and TABcorp. As part of the deal, William Hill and Crownbet were required to cease use of the trading names William Hill and Crownbet by late October 2018 and to create a new entity and name.

The fresh, new name chosen to spearhead this betting behemoth? 'Sportingbet'.

Sportingbet - clearly distinguishable from their rival Sportsbet... right?

By way of background, it is alleged that the name Sportingbet has been used by William Hill in varying capacities since as early as 2002 and is a registered trade mark owned by William Hill. It has literally come off the bench and been put forward as the new name. Irrespective of whether this change is better described as a clever and timely marketing strategy, or nothing more than lazy and opportunistic, 'Sportingbet' was announced as the official name of the new bookmaking entity in June 2018.

Unsurprisingly, Sportsbet took issue with the name change, and promptly filed an application against Crownbet with the Federal Court of Australia on 21 June 2018, seeking urgent temporary orders to restrain use of the name Sportingbet. In support of their application, Sportsbet produced a large amount of evidence relating to advertising, brand recognition and the evolving and expanding market of casual 'impromptu' gamblers taking advantage of mobile technology in social settings.

Concurrently, Sportsbet filed an application with the Australian Trade Marks Office seeking cancellation of one of William Hill's earlier registrations for the trade mark Sportingbet on the grounds of non-use. This matter is currently pending.

In its application to the court, Sportsbet alleged that use of the name Sportingbet was misleading and deceptive (or was likely to mislead and deceive) and was in breach of the Australian Consumer Law. In response, Crownbet alleged that it had paid for use of the name and trade mark Sportingbet in purchasing the William Hill business, and would be unfairly disadvantaged by having to change names again while waiting for a final determination in the matter.

Three weeks after the application was made, the court found in favour of Sportsbet, ordering that Crownbet be restrained from using the name 'Sportingbet' until the matter is further dealt with by the court on a final basis, sometime either later this year or next year.

As the final determination will occur sometime after Crownbet's October 2018 name-change deadline, it may be commercially disadvantaged by being forced to give up the name Sportingbet and having to choose a new name to trade under, primarily due to the high costs associated with re-branding.

The Bod(s):

The above result can be compared to the Insta(gram) worthy spat between Rachael Finch (the 3rd runner-up at Miss Universe 2009) and Sophie 'The Bod' Guidolin over the use of the word 'Bod' in their respective apparel businesses.

Ms Finch originally operated under the company 'Body of Dance', which was abbreviated on labels to 'BOD' or 'B.O.D.' As the owner of the trade mark 'The bod', Mrs Guidolin commenced proceedings against Ms Finch, and made claims for misleading and deceptive conduct, trade mark infringement, and for the common law tort of 'passing off'.

Mrs Guidolin's application failed, and Ms Finch was allowed to continue use of the trade mark BOD in respect of her line of clothing. In refusing the application, Justice Perram remarked that (among other things); "it does seem to be a case where they [Mrs Guidolin] have sat on their hands", and found that Mrs Guidolin likely became aware of the existence of Ms Finch's brand in October 2017 but did not bring an application to restrain use of the trade mark until 4 December 2017.

Other reasons for the court's refusal of the application related to the classification of the products being sold (some items sold by Mrs Guidolin were not considered apparel and therefore where not in direct competition with Ms Finch's clothing line), as well as the doctrine of 'the balance of convenience'. The matter ultimately settled out of court in March 2018.

Concluding thoughts:

The above two cases have been highlighted to demonstrate the need for businesses to monitor their competitors, and if they wish to protect their intellectual property, to ensure that they take timely legal action to do so.

The ability of your legal advisors to bring their resources to bear in a quick and professional manner will minimise any potential disruptions and/or damage to your business's most important assets: its name and brand.

If you suspect that another company has potentially infringed your intellectual property rights or if you need assistance in defending use of your business name or trade marks, my immediate advice would be to 'back a sure thing' and get in touch with Coleman Greig's team of highly experienced Intellectual Property lawyers, who will be able to walk you through and provide specific advice on your particular matter.

PS: In case you were wondering, Crownbet have decided to launch under the name 'BetEasy', and are being headed-up by the former head of Sportsbet (whose father once ran the old Sportingbet). They have launched a cross-claim against Sportsbet, which is next listed in September.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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