Two of the biggest online betting brands are going head to head in a legal war which will see the victor claim valuable monopoly style rights to an otherwise generic or descriptive brand. The brands in question are SPORTSBET and SPORTINGBET. Earlier this year Sportsbet successfully obtained an interlocutory injunction preventing CrownBet from rebranding as Sportingbet on the basis that Sportingbet is too similar to Sportsbet and likely to mislead or deceive consumers. This is why CrownBet, who was contractually required to rebrand in August 2018 following its separation from Crown, opted to rebrand as BetEasy.
When granting the interlocutory injunction, his Honour Justice Moshinsky of the Federal Court noted that the effect of the interlocutory injunction was similar to a permanent injunction because, even if CrownBet were to be successful at a full hearing, it would be unlikely that CrownBet would rebrand a second time. His Honour however concluded that Sportsbet had established a strong case of a likelihood of trade mark infringement and breaches of the consumer protection provisions of the Australian Consumer Law to justify the injunction.
In a case of double or nothing, CrownBet (BetEasy) is taking retaliatory action against Sportsbet apparently seeking to have the Sportsbet trade mark removed from the Register on the basis it should never have been registered. BetEasy apparently claims that if the Court determines that Sportingbet is too similar to Sportsbet, and should be denied registration, then Sportsbet should also be cancelled because at the time of Sportsbet’s registration numerous other Sports and Sporting Bet style brands existed.
We think you should always gamble responsibly and query whether this is a good bet. Sportsbet is entitled to be the registered owner of that trade mark unless, perhaps, it can be shown that there was some wrongful conduct on its part in securing its registration. Even if BetEasy is able to make out a claim for removal we think it’s a safe bet that Sportsbet will appeal to the Court to exercise its discretion under section 101(3) of the Trade Marks Act to allow the trade mark to remain on the Register.
As we wait for this case to unfold, we make the following observations:
- Investing in a generic brand is high risk, high reward.
- Enforcing your registered trade mark rights in a generic brand is more difficult than compared to a distinctive brand. Other traders should be allowed to use words that describe their goods or services even if those words might form part of a registered trade mark. The line of descriptive use vs use as a badge of origin becomes blurred.
- When selecting a brand ensure you understand the prospects of securing registration, the limitations associated with any prospective registration and whether your brand might step on the toes of other trade mark owners.