In November 2017, radio station Triple J made headlines by announcing that their annual “Hottest 100” countdown of the year’s most popular songs would no longer be broadcast on Australia Day. The move came after scrutiny over how Australia Day was celebrated. The decision was based on a Triple J survey where around 60 percent of participants voted to change the date of the countdown.

There has been a lot of public comment both in support of and against the decision. However, one of the more interesting responses was from rival radio station Triple M. In December, Triple M announced that they would be broadcasting a countdown on Australia Day with a similar format to the Hottest 100, dubbed the “Ozzest 100”.

Political debate aside, the move by Triple M poses an interesting question about branding and intellectual property rights. Namely, is Triple M infringing on Triple J’s intellectual property (IP) by coming up with a similar concept that has a similar name?

The Potential IP Rights

IP rights take a number of forms and can include trade marks, copyright, patents and designs. For the “Hottest 100”, the most relevant IP is the trade mark. A trade mark is a symbol, logo, name or word that is used to represent a brand. They are used to distinguish the goods and services of one business from another. To protect a trade mark in Australia, you need to first apply for the mark and have it registered with IP Australia.

Searching the IP Australia Trade Mark register reveals that The Australian Broadcasting Corporation (ABC) — who owns Triple J, has a registered trade mark for “Hottest 100”. So far, the company that owns Triple M, Southern Cross Austereo Pty Ltd (SCA), has not applied for a trade mark for “Ozzest 100”.

A Possible Legal Conflict

The ABC may form the view that “Ozzest 100” infringes on their IP rights to “Hottest 100”. By having the registered trade mark for “Hottest 100”, the ABC has the right to use the mark exclusively. This means they can stop others from using the same or similar name for a similar set of goods and services (like another radio feature). One potential argument that the ABC might consider is whether SCA’s mark is deceptively similar.

The argument that a mark is deceptively similar will win if it can be shown that there is a strong resemblance between the registered trade mark and the potentially infringing mark. This requires a comparison of the marks to discern their similarities and differences. Ultimately, the “overall impression” of the potentially infringing mark is what determines whether the marks are too similar.

A brand does not need to have deceived customers intentionally. What is required, however, is a likelihood of the mark misleading a consumer. This depends on factors such as similarities in visual impressions or whether the two marks are phonetically similar.

“Ozzest 100” has obvious similarities to “Hottest 100”. Therefore, the ABC could make an argument that it would mislead consumers.

SCA would contend that the similarities do not go so far as to being misleading. It would be an interesting argument for both the ABC and SCA to pursue, but without the determination of IP Australia or a court, it is hard to speculate at this stage what the outcome would be.

Conclusion

The brand recognition of the ABC’s “Hottest 100” can be argued to be synonymous with Australia Day for a certain generation of listeners. The fact that the move has been made to change the date of the program and that SCA has indicated they will run a similar show with a similar name has the potential to degenerate into a legal skirmish.

The ABC’s registration of “Hottest 100” indicates that as a business, the ABC sees enough value in that brand to make attempts to protect it. The protection afforded by a registered trade mark means that the ABC can enforce their rights against other businesses that try to develop brands that are exactly the same or deceptively similar.

The question in this situation is whether or not a consumer would be fooled into thinking that “Ozzest 100” was somehow the same or similar to “Hottest 100”. If the ABC is able to prove all the elements required to enforce their trade mark, the “Ozzest 100” could potentially be stopped before the countdown even starts.

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Christopher Mittiga
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