Network Ten has provided an interim undertaking to the Federal Court of Australia that it will cease use of new 10BOSS branding from 21 December 2018.
The undertaking comes after Fairfax filed proceedings in the Federal Court alleging that Network Ten’s use was an infringement of Fairfax’s own registered trade mark for BOSS, and that the use amounted to misleading and deceptive conduct under the Australian Consumer Law.
Network Ten had been set to launch 10BOSS as a rebrand of its TV channel, ONE, having filed five trade mark applications for variants of the 10BOSS brand.
The first application was filed in July 2018 for the words TEN BOSS , with the remainder comprising the words 10 BOSS and logo variants filed in November 2018 [1960872, 1966750, 1966751, 1966903].
Fairfax, on the other hand, holds trade mark registration of the word BOSS  which it filed in 2015.
According to the Court decision, a meeting between Network Ten and Fairfax occurred in August 2018 about use of the brand, but Fairfax did not agree to permit Network Ten to use 10BOSS, citing the likelihood of confusion between the two brands. Fairfax gave evidence that it was not made aware of Network Ten’s application at the meeting.
It is alleged that Network Ten then went ahead with its proposed launch of the 10BOSS brand on October 31 despite Fairfax’s concerns.
After discovering the launch, Fairfax sent a letter of demand on 1 November. Fairfax then commenced an application for interim injunction in the Federal Court of Australia. An initial hearing was conducted on 3 December.
On 10 December, Network Ten reportedly “made the decision to cease using 10 BOSS as a channel name as from the end of 21 December 2018” and offered a set of undertakings to the effect that it would cease use of the 10BOSS branding by that date. A further hearing was convened on 11 December, at which the Court accepted the undertakings.
The decision acknowledges that Network Ten conceded use of the relevant trade marks, but argued that its use would not infringe the Fairfax trade mark.
The Court awarded costs of the interim application in favour of Fairfax, noting that Network Ten ought to have offered the undertaking at the time it had received the initial letter of demand.
Effect of the Interim Order
It should be noted that the interim decision of the Court does not finally determine whether infringement is made out. The final decision on infringement is made after trial.
In IP infringement cases, the Court has power to make an interim restraining orders at the application of a party where:
- there is a prima facie case to answer (that is, the allegations are more than trivial or vexatious);
- the balance of convenience favours the party seeking the order (that is, the claimant has ‘more to lose’ than the defendant if the restraint is not granted);
- the claimant is in a position to compensate the defendant if it ultimately fails in the claim; and
- the Court otherwise considers it appropriate to do so.
What happens next?
The usual Court process will need to be followed to determine if Network Ten has infringed Fairfax’s trade marks. At the interim hearings, Network Ten advanced a number of arguments against infringement.
If infringement is made out, the question of compensation would also need to be determined.
The undertaking remains in place until the Court releases a final determination of the dispute, or the matter otherwise settles. If Network Ten were ultimately successful in defending the claim, it would likely be clear to resume use of the 10BOSS branding.
There is also the strong possibility that the parties will negotiate a settlement of the dispute.
Image Credit: Network Ten
Interim Decision: Fairfax Media Publications Pty Limited v Network Ten Pty Limited  FCA 2003 (Yates J, 11 December 2018)