Boost Tel Pty Ltd v Singtel Optus Pty Ltd [2023] FCA 213
File number(s):
NSD 164 of 2023
Judgment of:
THAWLEY J
Date of judgment:
14 March 2023
Date of publication of reasons:
17 March 2023
Catchwords:
INTELLECTUAL PROPERTY – application for urgent interlocutory injunction – alleged infringement of trade mark – whether prima facie case of trade mark infringement – whether balance of convenience favours grant of interlocutory injunction – held: interlocutory injunction granted
[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.
[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.
[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.
Consideration
[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.
[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.
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AGLC
Boost Tel Pty Ltd v Singtel Optus Pty Ltd [2023] FCA 213
Case
[2023] FCA 213
Decision Date
CaseChat Overview and Summary
In the Federal Court, Boost Tel Pty Ltd applied for an interlocutory injunction against Singtel Optus Pty Ltd, alleging infringement of its registered trademarks. The court was required to determine whether Boost had established a prima facie case of trademark infringement and whether the balance of convenience favoured the grant of an interlocutory injunction. Boost argued that Optus' use of the Boost branding in its telecommunications services created a likelihood of consumer confusion, potentially harming Boost's reputation, customer relationships, and business prospects. Optus contended that there was no infringement as it did not use the trademarks in the same manner as Boost.
The court found that Boost had established a prima facie case of trademark infringement, as the services offered by Optus and the Boost trademarks were in the same industry. The trademarks were found to be deceptively similar, leading to potential consumer confusion. The court considered the balance of convenience and concluded that the risk of irreparable harm to Boost outweighed any potential prejudice to Optus. The injunction would prevent further confusion and preserve the status quo pending the final hearing. The court granted the interlocutory injunction, restraining Optus from promoting or selling services under the contested names, with specific exceptions for existing customer invoices. The court reserved the question of costs for the trial judge and granted liberty to Boost to apply for costs. The court also amended and dissolved certain previous orders related to the case.
Orders
Orders of the court
Injunction
2. Subject to order 3, until the conclusion of the final hearing or further order, the respondent whether by its employees, agents or howsoever otherwise, be restrained with effect from 12.00pm from 17 March 2023 from promoting, advertising, supplying and/or selling internet or mobile telephone services under or by reference to the product names “Boost”, “Internet Boost”, “Mobile Boost”, “Optus Boost”, “Optus Internet Boost” or “Optus Mobile Boost” (the Impugned Terms).
3. It shall not be a breach of order 2 for the respondent to issue invoices to its customers bearing any of the Impugned Terms where those customers have, prior to 12.00pm 17 March 2023, purchased services under or by reference to any of the Impugned Terms.
4. The question of costs of the interlocutory application be reserved for consideration by the trial judge.
5. Liberty be granted to the applicant to apply to Justice Thawley in relation to order 4.
Suppression orders
6. “Annexure A” to the orders made on 13 March 2023 be amended as set out in “Annexure A” to these orders.
7. Orders 3 and 4 of the orders made on 13 March 2023 be dissolved.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
ANNEXURE A
1. Confidential Exhibit “CBL-2” to the Affidavit of Cameron Bradley Luby affirmed 6 March 2023 (Luby Affidavit).
2. Confidential Exhibit “CBL-3” to the Luby Affidavit.
3. Exhibit 2 tendered on 13 March 2023.
Background
Background to the litigation
Full text does not contain this section.
Evidence
Evidence Before The Court
Full text does not contain this section.
Decision
Reasons for decision
I take into account the potential application of s 122(1)(b)(i) of the TM Act in considering the strength of the prima facie case. I am unpersuaded that s 122(1)(b)(i) provides a strong answer to the prima facie case of infringement under s 120(1).Conclusion on prima facie case The services offered in relation to the Impugned Terms are in the telecommunications industry as are the registered services in respect of the Boost Trade Marks. Boost has established a prima facie case that the Impugned Terms are being used by Optus as a trade mark. Boost has also established a prima facie case that the Impugned Terms are deceptively similar to one or more of the Boost Trade Marks. There is a reasonable argument that s 122(1)(b)(i) of the TM Act does not alter this result. I will return to say something more about the strength of the prima facie case later in these reasons.BALANCE OF CONVENIENCE Mr Hardy’s affidavit included the following, most of which was received only as evidence of his belief: 46I consider that consumers are likely to be misled and that this confusion will result in significant and irreparable harm to Boost including in the following ways.(a)I consider that Boost's value and goodwill associated with the Boost branding (and Boost Marks) … will be diminished. As I discussed above, I am aware through my role and experience with Boost that the Boost Marks are significant brand assets for Boost and that Boost has significantly invested in the Boost Marks and Boost branding since at least 2000. Relatedly, the use of the Boost branding by Optus gives Optus a “free ride” on Boost's goodwill that has been developed and maintained at a significant cost.(b)I consider that Boost's current or future customers could acquire or seek to acquire services from Optus in the mistaken belief that Optus is affiliated with or licensed by Boost or that alternatively the BOOST Services are, in fact, provided by Boost.(c)In particular, I consider that customers could readily be misled that Boost has entered into a commercial relationship with Optus or that the product features associated with Boost, including its superior geographic mobile coverage could be accessed by purchasing this Optus product, due to the need for MVNO's [Mobile Virtual Network Operators] to resell network capacity within Australia and the fact that Boost and Optus have previously been in a commercial relationship. If this occurs, the consumer is likely to attribute whatever experience they have with Optus, including any negative experiences, to Boost.(d)I consider that Boost's current customers could be mistaken that they no longer have access to the Telstra network leading to significant customer dissatisfaction. Further, new customers may be discouraged from joining Boost under the belief that other competitors have better access to the Telstra network than Boost. By way of example, annexed to this affidavit and marked Annexure WH-14 a copy of a review article between Boost and ALDI mobile recommending Boost over ALDI mobile as it is the only mobile phone company to have access to Telstra's full network. Accordingly, I consider that this confusion would have a detrimental impact to Boost's business, as Boost's main competitive advantage in the market is the Boost brand and its unique partnership with Telstra.(e)If the Boost brand and goodwill is diluted, I am concerned that this could significantly harm Boost's ongoing relationship with Telstra and could have an impact on the renewal of the Telstra Partnership. This would significantly harm Boost's business and revenue as Boost's entire business model rests on its relationship with Telstra (and its ongoing access to the Telstra network).(f)Optus' use of the Boost brand significantly impacts Boost's ability to clearly and effectively market its Boost brand to the public (and distinguish its services from those of Optus) and compromises Boost's ability to exclusively use its brand in its future campaign and promotions to the detriment of the customer journey being delivered by Boost in connection with the Boost brand. Boost currently has a significant pipeline of brand promotional activity and the use of the Boost branding by Optus would significantly drive confusion in relation to these campaigns.(g)Optus' use of Boost branding has the potential to curtail Boost's use of the BOOST Marks in future additional goods and services, including the ability to use BOOST in conjunction with another word or sub-brand.(h)Lastly, any use of the Boost brand by Optus would curtail future planned growth opportunities, and would require Boost to alter its marketing to avoid consumer confusion.47If Optus is not restrained from using the Boost brand and was allowed to continue promoting its services under the Boost brand while awaiting a decision from the Court in relation to infringement, I consider that there would be irreparable harm to the distinctiveness and value of the Boost brand, as this would result in two competitors in the market using an identical brand in relation to identical services. In my view, consumers would no longer perceive the Boost brand as distinctive of one trade source (ie Boost) alone.48Even if the Court were, following a trial, to restrain Optus' use of BOOST, MOBILE BOOST, INTERNET BOOST, OPTUS BOOST, OPTUS MOBILE BOOST, OPTUS MOBILE BOOST BETA and MOBILE BOOST BETA, I am concerned that the harm suffered by Boost in the intervening period would be irreparable. In particular: (a)once a consumer has formed a view that there is an association between Optus and Boost, it is likely to be difficult to change that view. I am aware from my 30 years' marketing experience that associations formed in the mind of consumers are often long-lasting and difficult to correct, which could have ongoing harm including for the reasons set out in paragraph 46 above.(b)even if Optus rebrands the BOOST Services, some consumers who were aware of the former name may continue to hold the view that it continues to be or at least previously was affiliated with Boost.49I am concerned that the harm I describe above will be very difficult, if not impossible, for Boost to quantify including because of the challenge in quantifying:(a) goodwill (and its reduction);(b)the effect on consumer's purchasing decisions, if confused; and (c)the effect on consumer satisfaction.50For these reasons, I believe there is a high degree of risk of consumers being misled into believing there is a connection between the services provided by Optus and the goods and services provided by Boost.
Ratio Decidendi
Legal Principle Established
Section 20 of the TM Act includes:20 Rights given by registration of trade mark(1)If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the exclusive rights:(a) to use the trade mark; and(b) to authorise other persons to use the trade mark;in relation to the goods and/or services in respect of which the trade mark is registered.Note 1: For registered owner see section 6.Note 2: For use see section 7.Note 3:In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.(2)The registered owner of a trade mark has also the right to obtain relief under this Act if the trade mark has been infringed.Note: For what amounts to an infringement of a trade mark see Part 12. It follows that Boost has the exclusive right to use and authorise the use of the Boost Word Mark, BOOST, in relation to the goods and services for which it is registered. As Burley J stated in Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808; 158 IPR 9 at [229]:The registered owner is entitled to a monopoly in the use of the words in whatever form they are rendered, whether in stylised or plain form, with or without capitalisation or partial capitalisation and whether or not design elements are used. “Trade mark” is defined in s 17 as “a sign used, or intended to be used, to distinguish … services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”. A trade mark is a sign used to indicate the origin of the services to which it is applied, or a connection in the course of trade between the services and the person who applies the mark to the services: E & J Gallo Winery v Lion Nathan (Aust) Pty Ltd [2010] HCA 15; 241 CLR 144 at [41]-[43]; Shell Co (Aust) Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; 109 CLR 407 at 425 (Kitto J). Thus, use “as a trade mark” is use of the mark as a “badge of origin”: Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721; 96 FCR 107 at [19]; E & J Gallo at [43]. Section 120(1) provides:120 When is a registered trade mark infringed?(1)A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.Note 1:For registered trade mark see section 6.Note 2:For deceptively similar see section 10.Note 3:In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A. As noted earlier, the Boost Word Mark is registered in various classes, including in “telecommunications and communications equipment, apparatus and systems” in class 9 and “telecommunication and communication services” in class 38. It was not in dispute that the use by Optus of the Impugned Terms occurred in providing telecommunications services. Optus contended that there was no prima facie case of infringement, because: (a) Boost had failed to demonstrate that Optus used the Impugned Terms “as a trade mark”; and (b) the Impugned Terms (apart from the word BOOST) are neither substantially identical nor deceptively similar to the Boost Trade Marks.Use as a trade mark