In October 2018, Network Ten rebranded its channel ‘One’ as ‘10 Boss’. Fairfax Media immediately complained that the new 10 Boss logo was too similar to its Australian Financial Review (AFR) BOSS Magazine logo. Fairfax commenced legal proceedings for trade mark infringement. Facing legal action, Ten decided to rebrand again and changed the name from 10 Boss to 10 Bold.
Ten explained the change with a cheeky marketing slogan – ‘it’s better to be bold than bossy’. However, it’s likely Ten decided to avoid court. Although rebranding is always a risky and costly exercise, especially for such a well-known brand as Network Ten, this was a costly mistake. This article will explain what happened and share five important lessons you should take away from the case if you are building a new brand or undertaking a rebrand.
Confirm No Other Competitors Have a Similar Mark to You
When choosing a new brand name, logo or slogan, you should ensure that your new branding is not too similar to a competitor’s existing mark. Even big market players like Ten sometimes fail to complete this step. In Ten’s case, Fairfax claimed that the ‘10 Boss’ logo Ten chose was too similar to its AFR Boss logo. As this shows, the brand names do not need to be identical for a competitor to claim trade mark infringement.
When you apply to register a trade mark, your application will be assessed against any similar trade marks as well as any exact matches. Because of this, it is essential to conduct comprehensive research before you invest in your new brand.
Broaden Your Search
In Ten’s case, both Ten and Fairfax registered their trade marks in the same trade mark class. However, even trade marks in other classes can affect your trade mark registration. This is because registering a trade mark in one class may be enough to protect the mark against infringement from other related classes. Because of this, you should search for:
- a broad range of trade marks in your class; and
- trade marks that are registered in different but related classes to the class you have chosen.
Consider Unregistered Trade Marks
Even if a competitor has not registered their trade mark, you could still face consequences for using a similar mark. In Ten’s case, Fairfax could easily argue that Ten had infringed on their registered trade mark. If a competitor has not registered their branding as a trade mark, however, they may still have rights to their unregistered trade mark.
If you use a mark similar enough to a competitor that confuses consumers, you may be liable for misleading and deceptive conduct. Your competitor could also accuse you of passing off, which means presenting your goods or services as if they were your competitors’. Regardless of whether your competitor has a registered trade mark, investing in similar branding could lead to legal issues. As well as searching the trade mark register, you should also complete a general overview of websites, applications and businesses in the marketplace that use a similar mark.
Search Early
Before investing in costly activities that include your new logo, carry out searches as soon as you have the idea. It might be plain that you cannot use your intended trade mark on your goods and/or services due to a prior registration. It is better to know this than to waste valuable time and money.
Use Your Trade Mark
If you successfully register a trade mark but never use it, competitors can apply to have your trade mark removed.
For example, Ten may have been able to use Fairfax’s trade mark if Fairfax was no longer using the logo.
Ten would need to lodge an application with IP Australia to remove Fairfax’s trade mark registration. Fairfax would then need to prove that it had been using the trade mark in the three years prior to the removal application. If Fairfax could not do so, IP Australia would remove Fairfax’s registered trade mark and Ten would be free to apply to register the trade mark.
In this case, however, the logo was still in use, so Ten could not apply for it to be removed. You could consider this option if your competitor has a trade mark they do not use.
Oppositions
Oppositions are a last resort when issues cannot be resolved through other steps, given the complexities and costs. Often the unsuccessful party can be ordered to pay the other party’s costs, which can be a big financial burden. As seen in this case, even large organisations like Ten want to avoid court. The cost of a second rebrand was more economical than fighting a battle they were not sure they would win.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Key Takeaways
Rebranding can refresh your business and the image you are trying to create. However, before choosing a new name, logo or tagline, ensure it is not already in use in your industry. You should undertake:
- comprehensive searches on the trade mark register; and
- general searches for unregistered trade marks in the marketplace.
If you want to use a competitor’s unused trade mark, you may be able to apply to IP Australia to remove the trade mark registration. Alternatively, you could also approach your competitor and offer to purchase their trade mark. If you have any questions about trade marks or rebranding, contact our experienced trade mark lawyers as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
A search of a marketplace can be done through a search engine, your country’s business register, social media and any other platforms that may be relevant to your industry.
There are a number of aspects to consider in this situation, such as class of goods and other similar trade marks on the register. Your best option is to seek preliminary legal advice from a trade mark specialist.
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