Earlier this month Justice Robertson of the Federal Court dismissed trade mark infringement proceedings commenced by a Mr Raymond Hoser (a.k.a The Snake Man) against Sportsbet. Television viewers will be familiar with Sportsbet’s often humorous and distinctive advertising typically featuring an individual engaging in a high concentration activity before being interrupted by a distinctive man’s voice calling out to the individual usually prefaced with the word “Oi” using a humorous or colloquial name. This case involved Sportsbet’s ad featuring a snake charmer being interrupted by the voice over calling out “Oi Snake Man”.
All reasonably light hearted, but not to Mr Hoser who deposed that he is known globally as “Snake Man”. Mr Hoser’s evidence demonstrated a not insubstantial reputation as a dedicated snake expert, author and entertainer. Furthermore, Mr Hoser is the owner of the registered trade marks “Snake man” and “snakeman”. Mr Hoser brought a claim for trade mark infringement and for breaches of the Australian Consumer Law (e.g. claims that the advertisement represented to consumers the existence of a connection or association between Mr Hoser and Sportsbet).
It is a well established principle in trade mark law that infringement is prefaced on a finding that the trade mark has been used as a trade mark – e.g. as a badge of origin in the sense that it indicates a connection in the course of trade between the goods and the person applying the mark to the goods or services. It is not for example an infringement to use a trade mark in a descriptive or generic sense. The Court held that the use of the ordinary English words “Snakeman” or “snake man” in the Sportsbet ad did not indicate a connection in the course of trade between online betting services and Sportsbet. The trade mark Snake man was not used to distinguish the betting services dealt with in the course of trade by Sportsbet. The Court rightly noted that:
• the words “snake man” have no connection to Sportsbet or online sports betting.
• the words “snake man” are spoken at a time in the advertisement when there is no other brand or sign on screen and before the subsequent sustained appearance of the SPORTSBET brand on screen.
• the words “snake man” are used in the introduction of the narrative in a way to capture attention and provide amusement and do not extend to the promotional substance of the ad.
The ACL issues were also quickly dismissed by his Honour who noted that the alleged representations were not made. That is, consumers would not believe the snake charmer depicted in the ad is Mr Hoser or that there is a connection between Sportsbet and Mr Hoser. Unfortunately, for Mr Hoser his gamble failed and he was ordered to pay Sportsbet’s costs. We think the odds of success were always speculative in this case.
• Before launching a trade mark infringement case carefully consider the type of use complained of – is the competitor using your brand in a descriptive sense or as a badge of origin? A generic brand such as ‘snake man’ will always be more difficult to enforce because of its descriptive attributes which other traders ought legitimately be able to use without fear of infringement.
• Businesses that select distinctive brands generally achieve greater success in the protection and enforcement of their brands.