Kiss trademark case continues: legal analysis

Melbourne narrowcast station Kiss is continuing its trade mark infringement action against ARN now that the company has launched KIIS in Sydney.

As revealed last year on radioinfo, the station is taking action under Trade Mark and Passing Off legislation against ARN.

ARN CEO Ciaran Davis told radioinfo this week that the company does not intend to take the KIIS brand national. He said the legal discussions with Kiss FM were ongoing.

If Kiss is to prove its case, key justifications will be the strength of its brand and whether it has a national or local following.

Manager Tim Byrne, contends that Kiss FM is national because it operates on FM narrowcast frequencies in Melbourne and Cairns and streams on satellite and the internet. He told Fairfax Media that Sydney is its second largest online audience after Melbourne and that a “large quantity” of people listen via the station’s smartphone app. The station also has a “local events” section for Sydney listeners on its website.

In establishing the Kiss case, Byrne has claimed thay ARN has treated his station with “contempt” and engaged in “proactive bullying.” ARN denies the accusation but will not be drawn into further public comment on the case.

There is a legal precedent for Australian radio stations protecting their name.

In Adelaide, a community station was using the name Triple M in that city since 1979, many years before the Austereo network rebranded its stations as Triple M around the country. That station, now known as 3D Radio, raised the possibility of legal action against Austereo. Eventually, in 1993, Austereo bought the right to use the name from the little Adelaide station. There are similarities in this case.
As Kiss FM’s trademark name registration is not yet complete, the station can only be protected by the common law of passing off, as well as the Australian Consumer Law statutes related to misleading and deceptive conduct. Our legal reporter explains:

Passing off is concerned with the misappropriation by deception of another’s reputation or goodwill. It includes fraudulent attempts by a person to pass off their goods or services as those of another and representations that falsely suggest some connection with another person’s products or business.
Using the intellectual property of a third party without their authority, using the intellectual property as your own, or holding out to third parties that you are connected to this name may lead to an action against you for the tort of passing off.
Sections 18 and 29 of the Trade Practices Amendment (Australian Consumer Law) Act (No. 2) 2010 (Cth) cover misleading or deceptive conduct, and false or misleading representations about goods and services. A breach of these provisions may allow a claim to be brought against you for damages suffered by a third person as a result of your acts or omissions. Generally, if passing off is proved, a breach of these sections will also be proved.
Three elements of a passing off claim (“classic trinity”):

• The first was identified by Lord Oliver in Reckitt: ‘First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying get-up (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff’s goods or services.
• Misrepresentation by defendant that its goods or services are those of the plaintiff (even if unintentional )
• Damage or likely damage to plaintiff

The High Court took a fairly broad view of passing off in Australia in 2000, and it has been narrowed since the Nike case that took place that year: “The injuries against which the goodwill is protected in a passing-off suit are not limited to diversion of sales by any representations that the goods or services of the defendant are those of the plaintiff.”
Importantly for Kiss, after improvements in international communications and travel, it has become possible to establish passing off without any sales or direct promotion in the jurisdiction. However, it remains essential to establish a reputation in the jurisdiction. At minimum, the plaintiff must prove that a “significant” or “substantial” number of persons within the jurisdiction are aware of the applicant’s brand or product. This is where Kiss will potentially fall down, as its brand is not recognised particularly widely outside of the state they operate in.
In Taleb – a 2011 case – Finn and Bennett JJ held that ‘exemplary damages’ may be available for passing off to punish a respondent for conduct showing ‘conscious and contumelious disregard’ for the applicant’s rights. Kiss allege that this has been the case with ARN.
In regards to the statutory claims mounted for misleading conduct under the Australian Consumer Law legislation (which with the passing off test), Interlego is proposition that claims based on the similar appearance of two different products will fail. In this case Lego sued another toy company that created similar looking bricks that were also compatible with actual Lego pieces.
Even more relevantly, in Nike the case hinged upon the word ‘Nike’ itself and not appearances. Here, not only did the court hold that the Consumer Law legislation and the tort of passing off could operate at the same times, they also recognised that freedom of competition was an objective of the legislation that needed to be respected alongside the need to prohibit misleading conduct.
The same year, in Remington, Philips was selling the only triple headed rotary shaver until Remington introduced a shaver of similar design. It was held that, in view of the similarity of theprudcts, it wa s’incument’ on Reminton to distinguish its shaver from Philps’ shaver. As the shavers were clearly marked ‘Remington’, this was sufficient to ward off the passing off claim.
In Mars Australia, Mars – the manufacturer of Maltesers – sued Delfi who made a very similar product labelled ‘Malt Balls’. Here there was no passing off or infringement. The distinguishing feature of Mars’ product was the word ‘Maltesers’. Given how successful the Mars brand is, the judge held that it was highly unlikely that ordinary consumers would mistake something not called ‘Malteser’ for a Malteser. As such, highly well-known brands will be less likely to succeed in a passing off claim – fortuitous for Kiss.
Finally, the split decision in Bodum is also relevant and fairly recent, having been handed down in 2011. Here, Greenwood J found that goods may become distinctive by reason of get-up or design, even though other brand names are present. As such, having a similar name is certainly not the only point of analysis, the general ‘shape’ of the produce is also relevant – which works in ARN’s favour. Greenwood also found that a lack of subjective intention to pass of or mislead is relevant.
Bodum was a market leader in the design, manufacture and distribution of homewares including coffee plungers in Australia and overseas. DKSH also sold homewares including a coffee plunger called the “Euroline Coffee Plunger”. Bodum claimed that DKSH’s coffee plunger had similar features to its Chambord Coffee Plunger and that the manner in which it was labelled, packaged and advertised falsely represented to Australian consumers that the products were inextricably linked and that Bodum had somehow licensed or endorsed the Euroline Coffee Plunger. 
The Court took into account the extensive marketing and advertising of the Bodum Chambord Coffee Plunger finding that it had developed a significant reputation in Australia. Its vast advertising and sales records demonstrated that Bodum was the market leader and had been for some time. The Court paralleled these findings to that of DKSH which had undertaken very little advertising to distinguish its Euroline brand in the marketplace. The Court recognised that the style, feel and overall ‘get up’ of the Chambord Coffee Plunger was distinct rather than generic in both its individual features and overall appearance. The Court found that Australian company DKSH had engaged in misleading and deceptive conduct under the then Trade Practices Act (now covered under the new Australian Consumer Law) and was guilty of passing off.
Two important points from this case:

  • attempting to differentiate a product through its trade mark or brand name may not be sufficient to distinguish your product from others in the market, particularly where your brand lacks reputation and may be seen by consumers as part of a market leader’s range of products; and


  • where products are typically advertised or displayed out of their packaging, it is critical to ensure that your product is appropriately labelled so that it can be distinguished from what would otherwise be similar shaped or similarly designed products. Nevertheless, it is still important to ensure that the packaging of your product is distinct from that of your competitors.

In the case of radio stations, the audio delivery of the brand may become relevant. While Kiss and KIIS are spelt differently, they sound the same when said or sung on air. On radio the audio rendition of your name can also form part of your brand or/or trade mark.

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