29th August 2018 - Sam Gilbert

Online-betting giants Crownbet and Sportsbet are going toe-toe over a dispute arising out of Crownbet’s attempt to rebrand as Sportingbet.

Crownbet who is a subsidiary of the Canadian gaming giant The Stars Group, obtained the brand Sportingbet as part of its acquisition of UK based William Hill Australia earlier this year.

William Hill had used the trade mark Sportingbet extensively prior to about February 2015, at which time it subsequently rebranded as ‘William Hill’.

A new ‘Sportingbet’ trade mark

As part of the attempted rebrand, Crownbet made an application to register a new trade mark for ‘Sportingbet’ along with an application of the same name ‘Sportingbet Pty Ltd’ with the Australian Securities and Investment Commission (ASIC).

Subsequently Sportsbet, which is owned by UK-based gambling company Paddy Power Betfair, commenced proceedings in the Federal Court. As part of the claims made against Crownbet (the Respondents), Sportsbet allege that the Respondents are threatening to engage in conduct that is misleading or deceptive, or is likely to mislead consumers in breach of Australian Consumer Law (ACL). In addition, Sportsbet allege that the respondents are threatening infringement of the ‘Sportsbet’ trade marks.

Misleading or deceptive conduct

Section 18 of the ACL, which is found in Schedule 2 of the Competition and Consumer Act 2010 (Cth), prohibits conduct by a person in trade or commerce which is misleading or deceptive or is likely to mislead or decieve.

 In addition, Section 29 of the ACL provides, that a person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion or advertising by any means of the supply or use of goods or services make a false and misleading representation that he or she has a sponsorship, approval or affiliation.

Whether there was a prima facie case

In this instance, Sportsbet was successful in seeking an interlocutory injunction restraining Crownbet from using the name “Sportingbet”.

His Honour (Moshinsky J) found that a strong ‘Prima Facie’ case had been made out by Sportsbet on the evidence before the Court. Moshinsky J referred to the established brand recognition of the ‘SportsBet’ trade marks and the way in which online betting transactions take place, including the fact that many bettors may be new or inexperienced in the market.

In reaching this conclusion, Moshinsky J noted that a substantial number of bettors would likely be confused between the two competitors, or likely to assume a relationship between ‘Sportsbet’ and ‘Sportingbet’.

Further, his Honour found the following factors as materially relevant in reaching the decision:

• level of sophistication between consumers in the marketplace;
• frequency of consumers using the services in the marketplace;
• the use of paid search engine advertisements to attract consumers;
• the difficulty or experience required to use the services;
• the built-up or acquired name of the brand in the marketplace;
• the likelihood of consumers being confused through organic searches through different mediums, such as online and on app stores.

Sam Gilbert, IP and Technology Consultant, B.A., LL.B  University of Technology, Sydney

If you would like to know more about this article, or need assistance with a trade mark, please do not hesitate to get in contact with the team at W3IP Law on 1300 776 614 or 0451 951 528.
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.