Just before the Christmas break last year, the Federal Court of Australia handed down an interim decision in the case of Education Broadcaster Adelaide Incorporated v Australian Broadcasting Corporation [1]. The Court granted Education Broadcaster Adelaide Incorporated (EBA) an injunction against the Australian Broadcasting Corporation (ABC), temporarily restraining it from using the phrase RADIO ADELAIDE in connection with certain goods and services, and allowed the parties to proceed to a sizeable six day trial in April 2017 to determine the matter finally.
Partner Hayden Delaney and Senior Associate, Briar Francis provide an overview of the proceedings to date, and discuss 5 key ways Australian businesses can mitigate the risks of engaging in expensive trade mark litigation.
5 key ways to mitigate trade mark litigation:
- Conduct a pre-filing search
- A carefully drafted trade mark application could save you thousands
- Make your intentions clear with employees (in writing!)
- Sign up for a trade mark watch service
- Collect evidence of use
The Facts
The preliminary facts of this matter are fairly simple. EBA recently acquired the broadcaster of frequency 101.5FM in Adelaide. Included in the acquisition was the trade mark 5UV RADIO ADELAIDE, which is registered for radio broadcasting services. EBA claims that it used the trade mark in its entirety from 2001 to 2003, after which it shortened its name to RADIO ADELAIDE in its everyday use.
The ABC, which broadcasts in each State and Territory via different frequencies, made the decision to roll out a branding change on 9 January 2017. This change would see its naming convention change for all of its radio services in capital cities, such that each radio station would be known as “ABC RADIO (name of capital city)”. This would mean that its Adelaide services would be rebranded from 891 ABC ADELAIDE to ABC RADIO ADELAIDE.
EBA alleged that ABC’s use of the phrase ABC RADIO ADELAIDE constitutes trade mark infringement under the Trade Marks Act 1995 (Cth), as well as misleading or deceptive conduct and false or misleading representations about goods or services under the Australian Consumer Law.
A detailed legal analysis of each party’s right to their respective trademarks, including the phrase RADIO ADELAIDE, is yet to be conducted. No doubt the process will have already cost the parties substantial time and money even before they reach trial. In particular, ABC now needs to put the rebranding of its Adelaide branch on hold, despite having already injected considerable money into the endeavour. The predicament serves as a timely reminder that the risk of being subjected to costly trade mark disputes can be mitigated, which starts with a comprehensive and carefully planned trade mark strategy.
5 key ways to mitigate trade mark litigation
1. Conduct a pre-filing search
Rebranding can be expensive, so before you send your stationery orders off and crack open the champagne at the launch, it’s a really good idea to know what’s out there that could potentially conflict with your business name, product/service names, logos or slogans. We recommend engaging a professional to conduct a search of the Australian trade marks register for anything that could trip you up now, or even in five years’ time.
It would appear that the ABC was already aware of EBA’s use of RADIO ADELAIDE when it decided to launch its new naming convention, but not every business is willing, or able, to take that risk. HopgoodGanim Lawyers can conduct comprehensive searches and provide businesses with advice on whether their existing or proposed branding may be infringing another party’s trade marks.
2. A carefully drafted trade mark application could save you thousands
It is vitally important that extra care is put into your trade mark application, specifically when drafting the goods and services you wish to claim as part of the application.
A trade mark professional will be able to guide you so that your application is not too broad (risking rejection by IP Australia, or removal of the trade mark from the register for non-use by a third party), but also not so limited that it prevents you from being able to receive the full benefit of trade mark registration. It is a fine line, and often businesses that submit their own applications find that they either spend months trying to get their application accepted by IP Australia (or give up all hope and let the application lapse), or end up butting heads with third parties who feel threatened by the application. These are both events that could potentially be avoided with some carefully drafted language.
3. Make your intentions clear with employees (in writing!)
If an employee or independent contractor contributes to the design or idea of your business’ branding, it must be made clear to them that the intellectual property in this contribution is transferred to the business. Exiting employees, especially founding contributors to the business, often feel entitled to branding that they have helped develop, and may infringe the trade mark rights of your business (intentionally or otherwise) by using similar trade marks when they decide to start out on their own.
To start on the right foot, businesses should make sure that their employment contracts and independent contractor agreements include clauses that assign all rights to the relevant trade marks (as well as the copyright in any logos) from the individual developer to the business. It is important that a trade marks expert is engaged for this work, as the language required to make this arrangement legally binding can be nuanced and complex.
4. Sign up for a trade mark watch service
Experience tells us that the sooner you become aware of a potential conflict and act on it, the more likely the problem is to go away with minimal expense. HopgoodGanim Lawyers can be engaged to conduct a trade mark watch, which searches the Australian trade marks register on a monthly basis for any trade mark applications that may conflict with your branding. If we get in quick enough, we can oppose a conflicting application and might just be able to stop it before the trade mark is registered. It’s certainly better than the alternative should you find out about the infringement later.
5. Collect evidence of use
Sometimes trade mark disputes can’t be avoided, especially if two parties started using similar trade marks in Australia around the same time. It is important to be prepared in case you one day find yourself instigating, or being on the receiving end of, a trade mark dispute. A very easy way to minimise the potential impacts of legal action, whether it be with IP Australia or in the Federal Court, is to ensure that you collect evidence from the time you start using your new trade marks.
It sounds daunting, but a lot of trade mark disputes hinge on how long the parties have used a trade mark continuously and the nature of that use. You can fast track the uncertainty in trying to dig for this information, often with limited time, by taking this simple step:
- start a folder (electronic or otherwise) in a secure location and put into it anything that crops up with your trade mark, including any of the following:
- a screenshot of the business’ website with date markers;
- a copy of stationery used by the business, and with them any invoice for printing or design of that stationery;
- photographs of any packaging;
- copies of any advertisements or other promotional materials, with some context regarding where and when the materials were published;
- copies of any publicity or media coverage you’ve received from magazines, news groups or external websites (again, including date information is key here);
- samples of invoices for the goods or services related to it;
- screenshots of the business’ social media posts; and
- photographs or design proofs of staff uniforms.
If some of this information can be collected for every year that the business uses its trade marks, you’ll be sure to benefit in two ways should a dispute arise: you’ll save yourself a lot of time hunting down (and potentially being unable to find) evidence that your business has used the trade mark in question; and you’ll save us a lot of work (and you a lot of money) by providing your challenger a firm indication of exactly where you stand on the matter. It could be the difference between having a dispute settled behind closed doors and having it dragged into the courtroom where a judge decides your fate.
We want to help you
It can be easy to neglect your trade mark portfolio, especially when other business needs take priority (and a large percentage of funds). Ultimately, though, the costs involved in defending your trade mark rights in court with little to go off, or being faced with a complete rebrand for lack of grounds against a competitor, far outweigh the upfront costs of getting your trade mark strategy right from the beginning. Trust us – we would much rather be doing the latter for our clients.
If you would like to know how HopgoodGanim Lawyers can assist you with your trade mark portfolio and branding strategy, please contact our Intellectual Property team.
[1] [2016] FCA 1502.