It was news enough when high profile radio duo Kyle Sandilands and Jackie Henderson (known on air as “Jackie O”) moved to the Australian Radio Network’s (‘ARN’) Sydney Mix station late last year, with their new show commencing in January. Sydney Mix then decided to re-launch the station under the ‘Kiis’ FM brand (a station used in North America by its parent company ClearChannel), and the news heated up.

It particularly caught the attention of Melbourne based dance station “Kiss FM”, which claims that ARN’s use of the name “will significantly dilute the goodwill and reputation of [the] much-loved Kiss brand in Australia which [has been]…carefully built up over the past 8 years”.

Both radio stations have filed trade mark applications for various versions of their respective names. None of the marks applied for have been registered yet. So, what happens now?

Kiss FM’s “KISS FM” trade mark was filed on 12 November 2013 (its “priority date”). It is listed by IP Australia as currently “under examination” which means that a Trade Mark Examiner is assessing whether to accept the trade mark. Whether a mark is accepted essentially depends on whether it is capable of distinguishing the applicant’s goods or services from the goods or services of other persons (ie whether any other trader would think of the mark and want to naturally use it in connection with similar goods or services) and whether it is deceptively similar to a prior registered trade mark. If the mark is accepted, Kiis FM will have 2 months to file its notice of intention to oppose the registration of the mark. It will bear the onus of proving at least one valid ground of opposition.

Kiis FM only filed its trade marks on 25 November 2013, so it will not have an earlier registered mark. This means the available grounds of opposition will be limited. One ground that may be available is section 43 of the Trade Marks Act 1995, which provides that registration can be opposed on the basis that the trade mark contains some connotation that would be likely to deceive or cause confusion. However, under this ground, it is the mark by itself that must be confusing, and external factors such as the reputation of other traders is not relevant.

If Kiss FM’s mark is registered, would the use of “Kiis FM” by ARN infringe? Trade mark infringement occurs where a person uses a sign as a trade mark that is substantially identical or deceptively similar to the registered mark in relation to similar goods and services. While the two names are not spelt identically, aural similarity is a consideration. For example, in Greenpeace Australia Pacific v Taylor the “Greenpeace” trade mark was held to be infringed by “GreenPiece”, in part because of their aural similarity. Here, the fact that both marks would be used in respect of the same services (radio broadcasting) would also be significant.

This situation serves as a good reminder of the importance of clearing and then registering your trade marks as early as possible, and certainly before you launch your business. If Kiss FM wants to challenge ARN immediately, they will have to rely on a common law cause of action such as misleading or deceptive conduct, or passing off, both of which are likely to be more complicated and costly than an action for trade mark infringement. Both actions require Kiss FM to establish that the public have been misled or are likely to be misled into thinking that Kiis FM has some association or connection with it. A Kiis spokesperson has stressed the new station is “clearly not looking to compete with [the] community station” but it seems that Kiss FM is up for the challenge, vowing to defend its rights in what it terms the “David and Goliath” battle.

Stay tuned (pun intended).