Taking a punt on the SPORTINGBET mark
Trade marks – misleading or deceptive conduct – interlocutory injunction – user of “SPORTSBET” seeks restraint on use of “SPORTINGBET” – characteristics of online betting market – admissibility of focus group report – prima facie case – previous co-existence of rival names – balance of convenience – need to find new name
Sportsbet Pty Ltd v Crownbet Pty Ltd [2018] FCA 1045
The applicant has since 1999 marketed online betting services under the name SPORTSBET, first as part of a registered domain name and, since 2004, as the subject of a number of registered trade marks on sports and “a selection of general entertainment and political events” (presumably mutually exclusive activities). From 2001 to 2015 the respondent used the SPORTINGBET brand and trade marks extensively in the course of its online wagering business.
In March 2013 the respondent was acquired by William Hill plc. In September of that year the respondent announced it was discontinuing the use of the SPORTINGBET brand because there was some confusion in the market between that brand and the rival SPORTSBET. In January 2015 William Hill announced that customers would be moved from SPORTINGBET and certain other brands to the WILLIAM HILL brand. There was subsequently some limited use of the SPORTINGBET brand between February and August 2016, but none since the latter date.
The present litigation arises from the proposal of the respondent to commence offering betting services under the name SPORTINGBET from the end of August 2018. This proposal is a result of contractual obligations in the course of corporate ownership changes that require the respondent to cease using the names WILLIAM HILL and CROWNBET by, respectively, 26 August and 22 October 2018. So a new name would be needed. Hence the plan to up the ante and take a punt by resurrecting the formerly used SPORTINGBET. The authors wager that in doing so, the respondent gambled on the applicant not taking objection to the new name.
On 11 July 2018 Moshinsky J, upon the usual undertaking as to damages, granted an interlocutory injunction against the use of the name SPORTINGBET by the respondent. His Honour applied the well-established authorities on the grant of interlocutory injunctions and section 18 of the Australian Consumer Law.
Particular features of the case are worth noting. First, there was no cross-examination of deponents of substantial affidavit evidence from both sides. Secondly, the only admissibility objection was to the report of a focus group prepared by an independent market research company. This was said to be inadmissible hearsay. His Honour held that the report was admissible on an interlocutory application. However, the respondent had argued that the report was prejudicial because the participants were not identified, nor were the questions put and the answers received. His Honour considered that for those reasons only limited weight could be given to the report: [11].
On the question of prima facie case, the respondent pointed out that the SPORTSBET and SPORTINGBET brands had been used by trade rivals for some fourteen years (2001 to 2015). There was only limited evidence of confusion. Further, both names were clearly descriptive of the business of the rivals, namely, betting on sport. There was a need to demonstrate the word had acquired a secondary meaning distinctive of the applicant’s business: Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216 at 229-230, Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd (2018) 354 ALR 353 at [312].
The proposed use of SPORTINGBET would be in a different font and colour (purple v blue and yellow). Nevertheless his Honour found not just a prima facie case, but a “strong” one (at [91], emphasis in original).
In doing so, his Honour relied particularly on an analysis of the nature of the online betting market, including the importance of new bettors being young unsophisticated adults, and often likely to make decisions in social groups, such as AFL Grand Final and Melbourne Cup barbecues. (The authors note that TV betting advertisements often feature cheerful male groups in a social setting, while anti-betting promotions show a miserable lonely figure looking at a laptop.)
Also mentioned by his Honour (at [92]) are the importance of word of mouth knowledge, and the very significant number of consumers who find their way through paid search engine advertisements or via organic searches of the App store. Many will use mobile devices where “the display screen is smaller, and differences will be less easy to distinguish”: [98]. His Honour noted (at [94]) that even now conducting a Google search for SPORTSBET results not only in the applicant’s website being presented but also sponsored links for the websites of two of its competitors: Ladbrokes and Bet365. However, the comment might be made that all these hazards of the internet world existed throughout the fourteen years when the highly descriptive names SPORTSBET and SPORTINGBET were used by trade rivals, with very little solid evidence of confusion, still less of misleading of consumers, and certainly no recourse to litigation.
On the question of balance of convenience, while this is of course the conventional title for the second step in the interlocutory injunction process, “convenience” is perhaps used in a somewhat technical sense, suggesting something more serious than “agreeable to the needs or purpose” (Macquarie Dictionary). The concept might be better captured by enquiring as to the “lower risk of injustice”: Bradto Pty Ltd v Victoria (2006) 15 VR 65, [24]-[35]. His Honour accepted that if an interlocutory injunction were granted but the applicant failed at trial, the odds were that it would probably not be feasible for the respondent to rebrand a second time, and therefore they would “in a practical sense” have lost the opportunity to use SPORTINGBET. This made the degree of likelihood of success a relevant factor in balancing the risks. His Honour in that context therefore relied on his finding that a “strong” prima facie case had been made out: [107]. On the alternative scenario, his Honour speculated that if an injunction were refused but the applicant succeeded at trial there would be “enduring confusion in the marketplace”, loss of goodwill and damage which would be difficult to quantify.
