In October 2018, Network Ten rebranded its channel ‘One’ as ‘10 Boss’. Immediately, Fairfax Media 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, ‘it’s better to be bold than bossy’. However, the decision was likely made to avoid court. Although rebranding is always a risky and costly exercise, especially for such a well-known brand as Network Ten, this was an especially expensive mistake to make. This article will explain what happened and share five important lessons you should take away from the case if you are currently building a new brand or undertaking rebranding.

Confirm No Other Competitors Have a Similar Mark to You

When choosing a new brand name, logo or slogan, you should first 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 for a trade mark, your application will be assessed against any similar trade marks as well as any exact matches. Because of this, it is important 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 a 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 it causes confusion for consumers, you may be liable for misleading and deceptive conduct. Your competitor could 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 very similar branding could lead to legal issues. As well as searching the trade mark register, therefore, you should also complete a general for websites, applications and businesses that use a similar mark. 

Use Your Trade Mark

If you successfully register a trade mark but then 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’ trade mark. Fairfax would then need to prove that it had been using the trade mark. If Fairfax could not do so, IP Australia would remove Fairfax’s trade mark and Ten would be free to apply for 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, however, if your competitor has a trade mark they do not use. 

Key Takeaways

Rebranding can refresh your business and the image you are trying to create. However, before choosing a new name, logo or tagline, make sure that it is not already in use in your industry. You should undertake:

  • comprehensive searches on the registered trade mark database; and
  • general searches for unregistered trade marks.

If you want to use a competitor’s trade mark, you may be able to apply to IP Australia to remove the trade mark.  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 LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.

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