When an interlocutory injunction sought by Sportsbet forced CrownBet to forget about rebranding to Sportingbet, CrownBet did anything but forget SportsBet's arguments. In a continuing legal battle over wagering brand names, CrownBet, now known as BetEasy, is seeking cancellation of the SPORTSBET trade mark on the same grounds Sportsbet used to successfully oppose the rebranding. Trade Marks Attorney Jules Thai reports.
In the August edition of InIP, we reported on Sportsbet's successful application for an interlocutory injunction against CrownBet to restrain it from rebranding to 'Sportingbet'. This meant a hasty reversion to its former name 'BetEasy'. At the same time, BetEasy faces a pending cancellation action brought by multiple parties against its previously retired trade mark 'sportingbet', on the grounds of non-use. In the wake of these challenges to its rebranding efforts, BetEasy has retaliated by filing a cross-claim in the proceedings with Sportsbet, asking the court to cancel the SPORTSBET trade mark by way of rectification, in an attempt to use Sportsbet's own claims of trade mark infringement and market confusion against it.
In its cross-claim, BetEasy contends that there are a number of wagering companies doing business in Australia using trade marks comprising the words 'sport' and 'bet', or derivations of those words. Since many of these trade marks, such as TAB Sportsbet, predate Sportsbet's trade mark, BetEasy argues that SPORTSBET should not have been registered in the first place. Further, if the court agrees with Sportsbet's argument that the co-existence of Sportingbet with SPORTSBET would have caused consumer confusion, then it should follow that the SPORTSBET trade mark should be revoked. In response, Sportsbet has conceded that 'sport' and 'bet' appear in the trade names of some sports betting services, but otherwise rejects BetEasy's arguments and denies that SPORTSBET is liable to cancellation.
While the matter has not yet been heard, a tightly fought contest is expected. It is likely to be relevant that the trade mark SPORTSBET overcame the section 44 (substantially identical or deceptively similar trade mark) objection raised against it, based on honest concurrent use. Further, in its July decision, the Federal Court stated that Sportsbet already had a 'very high level of brand recognition'.
A second rebranding and the ensuing court action are no doubt proving rather costly for BetEasy. This case serves as a reminder of the potential pitfalls that lie ahead in rebranding efforts, even if brand strategists and creative agencies are utilised. A trade mark specialist can help anticipate and navigate these pitfalls, and should also be consulted before launching a brand that may potentially infringe another trader's trade marks or contravene the Australian Consumer Law.