Taking a Punt on Trade Mark Enforcement: Round 2
As readers may recall, back in September 2018 we published an article focused on the naming feud raging between competing bookmakers, Sportsbet and Crownbet (now BetEasy).
Sportsbet won round 1 of this matter with some lightning quick offense, successfully applying for an interim injunction to restrain BetEasy (at the time known as Crownbet) from using the name and trade mark 'Sportingbet'. This outcome had the practical consequence of forcing BetEasy to scrap its original rebranding, without the need for a full hearing on the merits of the case.
Round 2 has seen a clever feint and counter-attack from BetEasy, who filed a cross-claim in the lead-up to the Melbourne Cup Carnival. BetEasy argued that, should Sportsbet ultimately succeed in its original application (that being the claim that the proposed name 'Sportingbet' was deceptively similar to 'Sportsbet'), then, by Sportsbet's own argument, the registered trade mark Sportsbet should also be cancelled and removed from the Australian Trade Marks Register given there were a number of bookmakers in the marketplace already using the words 'sport' and 'bet', or derivations of those words, at the time of filing the application for the trade mark 'Sportsbet'.
According to BetEasy, If the names are found to be too similar, the trade mark 'Sportsbet' should never have been allowed to have been registered.
Sportsbet have denied that the mere existence of the words 'sport' and 'bet' in the marketplace at the time of filing the application provides sufficient grounds to cancel the trade mark 'Sportsbet'.
Under the Trade Mark Act, a party may apply to have a registered trade mark cancelled (known as rectification) and removed from the Trade Mark Register. The cancellation of the registered trade mark may only result from an order given by a prescribed court.
As it stands, it is anyone's guess as to how the dispute will ultimately play out (although odds are, as usual, that the matter will result in a confidential settlement between the parties).
Should you have a query relating to any of the information in either of our recent articles on this particular matter, or if you require advice and/or assistance with regard to making or opposing a trade mark application or defending a trade mark registration, please do not hesitate to get in contact with a member of Coleman Greig's Intellectual Property team:
Emma Macfarlane - Principal, Litigation & Disputes
Catherine Sedgley - Senior Associate, Commercial Advice