The owner of community radio station, 5UV Radio Adelaide, obtained an interlocutory injunction in trade mark infringement litigation commenced against the Australian Broadcasting Corporation (the ABC) just before Christmas in 2016. The injunction temporarily prevents the ABC from rebranding its Adelaide radio station, "891 ABC ADELAIDE", to ABC RADIO ADELAIDE at least while the court proceeding is on foot.
Background to ABC Radio’s rebranding
In December 2016, the ABC announced, as a part of its national brand revitalisation project, that it would be rebranding its Adelaide radio station (previously known as 891 ABC ADELAIDE), to ABC RADIO ADELAIDE as of 9 January 2017. The ABC proposed to use the following logos as a part of its rebrand:
The rebrand was said to be prompted by changes in the way that consumers access content produced by the ABC. 891 ABC ADELAIDE broadcasts on the frequency 891 AM. However, it is also accessible on other media platforms such as podcasts and apps.
Educational Broadcasters Adelaide’s registered trade marks
Educational Broadcasters Adelaide Incorporated (EBA) is the owner of community radio station, RADIO ADELAIDE, and the trade mark 5UV RADIO ADELAIDE which is registered in respect of services including radio broadcast services. RADIO ADELAIDE broadcast on the frequency 101.5 FM continuously from 1972 to 2001, initially under the name 5UV and then, from 2001 to 2003, under the name 5UV RADIO ADELAIDE. Since 2003 it has broadcast under the name RADIO ADELAIDE and by reference to the following logo:
EBA claims trade mark infringement against ABC
In mid-December 2016, EBA sought to stop the ABC from using the ABC RADIO ADELAIDE mark by applying for and obtaining an interlocutory injunction from the Federal Court of Australia. EBA alleged that the ABC's use of the ABC RADIO ADELAIDE mark would infringe EBA's exclusive rights in the trade mark, 5UV RADIO ADELAIDE, and would also mislead or confuse consumers, in contravention of sections 18 and 29 of the Australian Consumer Law, which prohibit misleading and deceptive conduct.
EBA obtains interlocutory injunction
An interlocutory injunction (sometimes called a preliminary injunction) may be granted by a court before the issues in a court proceeding are finally ventilated and determined at trial. An interlocutory injunction preserves the status quo and is often sought where there is a risk that the actions of one party (the conduct that is being complained of in the case) might damage the other party in a way that cannot be adequately compensated with an award of compensatory damages at the conclusion of the proceeding.
To obtain an interlocutory injunction EBA had to satisfy Justice Charlesworth of the Federal Court that there was a serious question to be tried in the case, and that the balance of convenience favoured the grant of the injunction.
Was there a "Serious Question to be Tried"?
For the trade mark infringement case, the issue of whether there was a serious question to be tried rested on whether there was a sufficient likelihood that ABC RADIO ADELAIDE would be held (at the conclusion of the trial) to be substantially identical with or deceptively similar to 5UV RADIO ADELAIDE. In handing down her decision on EBA's injunction application Justice Charlesworth noted that EBA's prospects of success were impacted, "perhaps significantly so", by the presence in its trade mark of the call sign "5UV" and the presence in the ABC's mark of "ABC" or the ABC logo. However, she noted that the requirement that there be a serious question to be tried is not a particularly onerous one and that EBA's case was not so affected that it failed to meet that standard.
Justice Charlesworth also accepted that there was a serious question to be tried in relation to EBA's misleading or deceptive conduct case under the Australian Consumer Law. Her Honour placed considerable weight on the context in which the parties' marks would be used and noted that the aural uses of the trade marks in the parties' radio broadcast services will be particularly important at trial in determining whether the use of ABC RADIO ADELAIDE is likely to be misleading or deceptive. However, her Honour acknowledged the force of the ABC's submission that, because the radio broadcasting services were provided on different bandwidths (that is, AM v FM) and the ABC's content was also available online, it is unlikely that a consumer of radio broadcast services would mistake the two stations.
Did the Balance of Convenience Favour Granting the Injunction?
Justice Charlesworth found that the balance of convenience favoured the grant of the injunction, and temporarily restrained the ABC's proposed rebrand in Adelaide. Her Honour accepted that, if the ABC were not restrained from using the ABC RADIO ADELAIDE mark during the course of the proceeding, and if the court ultimately held that the EBA's trade mark had been infringed by the ABC, EBA would suffer damage to its reputation which could not be adequately compensated by a payment of damages. Her Honour considered the following factors were relevant to this finding:
- EBA and its predecessors have been trading as RADIO ADELAIDE for more than 15 years and have established a reputation in the RADIO ADELAIDE trade mark;
- Despite operating on different bandwidths, there appeared to be considerable commonality between consumers of the two radio stations who were at risk of being confused, leading to a potential loss of existing and future listeners, market share and revenue for EBA;
- The ABC appeared to be aware of EBA's use of RADIO ADELAIDE, as it sent an email to EBA on 1 December 2016 notifying EBA of the rebrand and outlining why the ABC did not anticipate that the rebrand would cause confusion; and
- The capacity of EBA and the ABC to meet the costs of rebranding, if necessary.
Her Honour acknowledged that the ABC might suffer inconvenience if restrained from using ABC RADIO ADELAIDE, either by delaying the rollout of its rebrand nationally, or delaying or changing its rebrand in Adelaide. However, Justice Charlesworth found that there was insufficient admitted evidence before her to ascertain the precise damage that the ABC would suffer.
Key Lessons for Brand Owners
This case is a timely reminder to all brand owners to ensure that they undertake appropriate searches and, if necessary, obtain the relevant IP rights early during any rebranding project or identify any existing trade marks which might create potential (and costly) obstacles to the rebrand. This is especially important for national or multi-national organisations where localised rights may affect consistency of branding.
The ABC's Rebrand
Since the decision, the ABC has proceeded with its rebrand across all other capital cities using the branding "ABC RADIO [capital city]". ABC Radio's Adelaide station has currently been rebranded "ABC ADELAIDE".
The court matter has been placed on an expedited evidence schedule and is listed for hearing for six days in April 2017 before Justice Charlesworth to finally determine the issues raised in the matter.