INSIGHT

An interlocutory injunction outcome you wouldn't have bet on

By Miriam Stiel
Industrials Intellectual Property Patents & Trade Marks

In brief

Crownbet's efforts to rebrand itself as 'Sportingbet' suffered a blow after Sportsbet successfully applied for an interlocutory injunction in the Federal Court of Australia. Lawyer Edward Thien reports.

Background

Earlier this year, InIP covered an unsuccessful interlocutory injunction application regarding the trade marks 'BOD' and 'The Bod'. Sportsbet Pty Ltd v CrownBet Pty Ltd [2018] FCA 1045 illustrates the fine line that exists in such applications.

Sportsbet operates an online betting website using the trade mark 'SPORTSBET'. Crownbet, as part of a rebranding following its purchase of rival betting agency William Hill Australia, sought to operate under the name 'SPORTINGBET'. While the court applied the same principles as in 'The BOD' case, this time it reached a contrasting result. In this case, the court was satisfied that Sportsbet had a prima facie case and that the balance of convenience warranted ordering the interlocutory injunction.

Sportsbet's argument

Sportsbet's application for interlocutory injunctive relief relied solely on its action under the Australian Consumer Law relating to misleading or deceiving conduct. Interestingly, 'SPORTINGBET' and 'SPORTSBET' had both been used concurrently between 2001 and 2015. However, on this point, Sportsbet drew the court's attention to evidence of confusion between these two brands. Notably, it was shown that the Northern Territory Revenue Office mistakenly believed Sportsbet had made a payment twice, such was the similarity between the two marks.

Prima facie case

An analysis of the way in which online betting occurs was fundamental to examining the plausibility of a misleading or deceptive conduct claim. For example, a significant proportion of Sportsbet's users make organic searches via their mobile phone's application store or through online search engines. Further, the majority of customers place bets on their mobiles devices in what is often a spontaneous and brief interaction.

In light of the way online betting transactions occur (particularly the brief amount of time exerted), the similarly between 'SPORTSBET' and 'SPORTINGBET' led the court to find that there was a strong prima facie case for misleading or deceptive conduct. It was held that a substantial number of consumers would likely access Crownbet's platform rather than Sportsbet's in error, or be likely to assume a trade association, if CrownBet started using the 'SPORTINGBET' mark

Balance of convenience

The court accepted that if an interlocutory injunction was granted and Crownbet was successful at trial, it would not likely be feasible to rebrand a second time. Therefore, granting interlocutory relief was tantamount to final relief in Sportsbet's favour. On the other hand, without an injunction, Sportsbet's potential for loss would be difficult to quantify, with a likelihood of enduring confusion existing in the marketplace resulting from the use of 'SPORTINGBET' in the event an interlocutory injunction had not been granted. On balance, the court ruled in favour of Sportsbet, with its strong prima facie case contributing to this conclusion.

What does this mean?

Crownbet has since rebranded its new offering to 'BetEasy' in the light of the court's decision. When compared to the contrasting result in the 'The Bod' case, this case shows the weight placed on the complexities of the factual matrices in interlocutory applications. The courts will not make their decision purely based on an objective analysis of the similarities between two marks. Instead, analysis is required of the markets in which these marks operate.