Trade marks are an important asset to any business. This is because they distinguish your brand from others. However, it is one thing to register your rights and another to enforce them. The online betting giant, Sportsbet, is suing its rival, Crownbet, for trade mark infringement. This article explains what happened between Sportsbet and Crownbet and what you can do if faced with a similar situation.
A Bit of Sports Betting History
Sportingbet was one of the leading bookmaking companies in Australia, owned by a UK gambling company, Sportingbet PLC. In 2013, William Hill, a well-known UK bookmaker, acquired Sportingbet’s Australian business to expand into the international market. Along with the acquisition, William Hill obtained the Australian trade marks for Sportingbet.
In March this year, CrownBet, one of Australia’s largest wagering companies, acquired the Australian branch of William Hill. The Sportingbet trade mark, which was originally owned by Sportingbet PLC, subsequently assigned to William Hill and now acquired by CrownBet, is the subject of much debate.
Sportsbet Sues CrownBet
When Sportsbet became aware that CrownBet was supposedly considering rebranding as Sportingbet, in the wake of its most recent acquisition of William Hill, Sportsbet took action to secure its right to the name. Sportsbet started with a letter demanding that CrownBet withdraw its trade mark application. When CrownBet denied this request, Sportsbet initiated proceedings, claiming that CrownBet’s rebranding would be in “flagrant disregard” of Sportsbet’s trade mark rights.
Sportsbet is not only demanding the withdrawal of the trade mark. It is also claiming compensation for damages and costs suffered as a result of the alleged trade mark infringement. Furthermore, Sportsbet submitted an application to IP Australia for non-use, as the name has not been in use for years. It seems as though Sportsbet is attacking CrownBet at all angles. The question is, which one has the best odds?
Trade Mark Infringement
Obtaining a trade mark provides the owner with the exclusive rights to use that mark and prevent others from doing the same. Under the Trade Marks Act, a trade mark is infringed where a party uses a trade mark that is substantially identical with, or deceptively similar to, the registered mark, in relation to the same goods or services.
On face value, we can assume that the two trade marks side by side, Sportsbet and Sportingbet, both for online betting services, are substantially identical or deceptively similar. The question is which party is infringing on the other’s rights?
When considering trade mark infringement, the court will consider the following factors:
- which trade mark was used first;
- which trade mark was registered first; and
- the reputations established in each trade mark.
Sportingbet was first to register the trade mark back in 2002. However, if Sportsbet has subsequently acquired a stronger reputation in the name, its rights to the name may be superior.
Removal of a Trade Mark For Non-Use
Another consideration is whether a trade mark is still in use. Even though IP Australia registered the Sportingbet trade mark, Sportsbet can challenge it, and IP Australia can withdraw it, if it is not in use. Therefore, Sportsbet has submitted an application to IP Australia for the removal of the Sportingbet trade mark due to non-use.
There are two grounds for removing a trade mark in regards to non-use under the Trade Marks Act:
- on the day on which the party filed the application for the trade mark, the applicant had no intention in good faith to use the trade mark in Australia; or
- the trade mark has been registered for more than five years, but has not been used in good faith for a continuous period of the last three years.
Sportingbet PLC probably had the intention to use the Sportingbet trade mark in good faith when applying for the mark back in 2002. However, Sportsbet may have strong grounds to argue that William Hill had not used the trade mark for at least the past three years. If Sportsbet is successful in removing the Sportingbet trade mark, this would certainly strengthen their case for trade mark infringement.
Misleading and Deceptive Conduct
In addition to a trade mark owner’s rights under the Trade Marks Act, there are similar actions under the Australian Consumer Law (ACL) if the infringing party’s conduct has been misleading or deceptive.
The ACL imposes several provisions on businesses to protect consumers. In particular, it provides that a person must not, in trade or commerce, engage in conduct that is:
- deceptive; or
- likely to mislead or deceive.
Sportsbet has argued that using the name Sportingbet would mislead or deceive consumers. It says that consumers would believe there is an association between Sportingbet and Sportsbet. It is important to note that a trade mark registration is no defence to misleading or deceptive conduct. Therefore, if Sportsbet is unsuccessful in its claim for trade mark infringement, it could establish a breach of the ACL.
The battle between wagering giants Sportsbet and Crownbet is yet to unfold. However, it should serve as a reminder to brand owners that continuous use of a trade mark is essential to enforce your rights. If you are concerned someone is infringing on your rights or damaging your brand, there are several actions to explore. If you have any questions, contact LegalVision’s IP lawyers on 1300 544 755 or fill out the form on this page.
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