INSIGHT

When you use what doesn't Belong to you…

Industrials Intellectual Property Patents & Trade Marks

In brief

Telstra Corporation Limited v BelongEnergy Pty Ltd (VID206/2019), recently resolved by consent orders in Telstra's favour, highlights the importance and utility of adequate trade mark protection. Lawyer Oliver Lloyd reports.

Background

Telstra Corporation Limited (Telstra) has operated a low-cost telecommunications business called Belong since 2013 using the registered trade marks shown below. Telstra asserted it had acquired substantial reputation and goodwill in Australia in relation to its Belong trade marks.

Belong trademark

The respondent was incorporated under the name Solarhouse Victoria Pty Ltd in November 2018, but over the course of December 2018 and January 2019, registered the business name 'belongenergy', the domain name 'belong.energy' and changed its company name to BelongEnergy Pty Ltd (BelongEnergy). Using its own unregistered trade marks as shown below (BelongEnergy Marks), BelongEnergy promoted its solar energy services via its website and various social media channels.

Belong trademark

Belong trademark

Telstra requested that BelongEnergy cease promoting and supplying its services under the trade mark 'Belong Energy' and any other trade mark including 'Belong', but BelongEnergy declined to do so. On 8 March 2019, Telstra filed a proceeding in the Federal Court of Australia claiming an injunction immediately and permanently restraining BelongEnergy from promoting and carrying on its business by reference to the sign 'Belong' or 'Belong Energy', or from representing to the public any association with Telstra. Telstra also sought an order cancelling BelongEnergy's registered business name and transferring the domain name registration to Telstra.

Infringement of Telstra's Belong trade marks

Telstra submitted BelongEnergy's marks were substantially identical with, or deceptively similar to, its registered Belong trade marks, and were being used in relation to goods or services in respect of which Telstra's Belong trade marks were registered. One of Telstra's Belong trade marks was registered in respect of energy efficiency and energy saving services.

In addition, Telstra submitted that, in light of Telstra's reputation and goodwill in the Belong trade marks, BelongEnergy's use of its own marks represented to ordinary Australian consumers that its services were provided by, licensed or approved by, or associated, connected or affiliated with Telstra. Telstra therefore submitted that BelongEnergy was engaging in misleading and deceptive conduct, or false or misleading representations under the Australian Consumer Law, and claimed damages in respect of those allegations.

The final result

On 19 March 2019, less than two weeks after filing proceedings, the Court ordered by consent of the parties that BelongEnergy:

  • cease promoting and carrying on its business by reference to the BelongEnergy Marks;
  • cancel its registered business name; and
  • transfer its domain name registrations to Telstra.

The other terms of the settlement agreed by Telstra and BelongEnergy remain confidential.

This case highlights the importance of having trade mark registrations for the protection of a business' brand. Further, it underscores the need for a business to consider its branding strategy and assess whether it is sufficiently protected, or alternatively, at risk of infringing the rights of third parties (even where those third party trade marks might be registered for different goods or services).