“Boss” to “Bold” – Network Ten’s trade mark headache

By David Stewart

11 December 2018

Australian television broadcaster Network 10 decided to rebrand some of its television channels. One of the new brands was “10 BOSS” – but The Australian Financial Review, owner of the “BOSS” trade mark, as applied to its long-running magazine, took issue.  Fairfax Media, the owner of The Australian Financial Review,  commenced proceedings against Network 10 on 9 November 2018.

Fairfax Media has a registered trade mark for “BOSS” dating back to 4 June 2015, and it appears that trade mark . (It is worth noting that Fairfax Media completed its merger with the Nine Network, a rival to Network Ten, last week.)

Justice Yates of the Federal Court of Australia heard the matter last Monday. Today the court made the following orders:

The respondent, whether acting by its directors, officers, servants or agents, or any of them or otherwise, undertakes to the Court and to the applicant, without any admissions, not to use or authorise the use, after 21 December 2018, of:

(a) BOSS, as a trade mark, on or in relation to goods or services (Registered Goods or Services) the subject of Australian Trade Mark Registration 1699350 (Registration);

(b) the marks subject of Australian Trade Mark Applications numbered 1936936, 1960872, 1966751, 1966750, and 1966903, as a trade mark, on or in relation to the Registered Goods or Services; or 

(c) any mark or sign, as a trade mark, which is substantially identical with or deceptively similar to BOSS or the marks identified in sub-paragraph (b) above on or in relation to the Registered Goods or Services, during the term of the Registration, without the licence or authority of the registered owner of the Registration or an authorised sub-licensor.

But between Monday and yesterday, Network Ten decided to change the brand from 10 BOSS to 10 BOLD.

Parallel to this dispute, on 11 July 2018 Network Ten had applied for trade mark applications for “TEN BOSS” and “10 BOSS” for, amongst other things, “television broadcasting”. These were accepted as prima facie registrable by Australia’s trade mark registry on 12 September 2018. But on 22 November 2018 the registry received correspondence which has prompted a consideration of revocation of acceptance – a scenario where the trade mark examiner decides whether or not to reverse the decision around allowing the applications to proceed.

We do not know if Network Ten undertook trade mark searches.  Trade mark searches are regarded by Australian courts as of paramount importance in the adoption of a brand. It is worth noting the Federal Court case on this: Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235 (11 March 2016):

[147.]… In my view, there is no probative and reliable evidence to suggest that he did not have such an appreciation at an earlier point. Business proprietors would usually know of the importance of trade marks. It is common for new business owners to conduct basic trade mark searches using the IP Australia website. The IP Australia website included as of 2010 basic information directed to people unfamiliar with trade marks. It included information about trade marks, searching for trade marks and suggested contacting a patent and trade marks attorney or legal practitioner for assistance if necessary.

[150.] In my view, an experienced business person would have conscientiously considered the type of information set out above and, if acting in good faith, would have conducted further inquiries including a search of the trade marks register. Mr Katelis failed to do this and his excuses were unconvincing. If he was ignorant of the Applicant and the Applicant’s trade mark, it was only due to his own indifference and his failure to make the inquiries that an honest and reasonable person would have made in his position.

A person who does not do a trade mark search before adopting a brand is at best engaging in wilful blindness. Either Network Ten failed to conduct searches – possible but unlikely given the organisation’s size and legal sophistication –  or it formed the view that the use of “10 BOSS” for media broadcasting would not infringe a registered trade mark for “BOSS” for, amongst other things, “Communication services, providing access to and electronic transmission of news, current and non-current information, newspapers, images, sound, advertising”.

Disclaimer: The information published in this article is of a general nature and should not be construed as legal advice. Whilst we aim to provide timely, relevant and accurate information, the law may change and circumstances may differ. You should not therefore act in reliance on it without first obtaining specific legal advice.