Optus has been taken to court by competitor Boost Mobile for using the word “boost” in its advertising.
Boost, claiming trade mark infringement, argues it has been using the word for 23 years to sell prepaid mobile services and refurbished phones.
Optus in January and February this year launched “Optus Internet Boost” and “Optus Mobile Boost”.
The Federal Court has granted an interim injunction stopping Optus using the word “boost” for now.
Optus argues that “boost” is an ordinary word which means “to increase; push up”.
And that the function of the Optus Mobile Boost tool is to increase mobile connection for a priority data experience. The Optus Internet Boost tool is to increase internet speed.
However, Boost says its brand is used across the whole of its business, and it considers this to be its most valuable asset. Boost has invested more than $10 million a year in building and promoting its telecommunications business under its brand.
Boost Mobile CEO Warren Hardy: “I consider that consumers are likely to be misled and that this confusion will result in significant and irreparable harm to Boost
“Any use of the Boost brand by Optus would curtail future planned growth opportunities, and would require Boost to alter its marketing to avoid consumer confusion.”
However, Optus says the apparent risk that consumers will acquire services from Optus in the mistaken belief that they are Boost’s services “is non-existent or at best vanishingly small”.
The judge, Mr Justice Tom Thawley: “... it is arguable that the use of the phrase “MOBILE BOOST” is deceptively similar to Boost’s registered figurative trade mark “BOOST MOBILE” in that the use of the phrase will cause consumers to wonder if that which Optus is offering is associated with Boost.
“The imperfect recollection of a number of typical consumers would not clearly remember or distinguish between the order of these words. In reaching this conclusion, I do not lose sight of the fact that the BOOST MOBILE mark is a figurative one and “Mobile Boost” are just words.
“It is to be accepted that, where it is used, the word OPTUS cannot be ignored.”
However, the judge says it would be “commercially naïve” to think that Optus did not closely consider the risks.
“The evidence is that Optus did indeed consider Boost’s trade mark when considering use of the word ‘Boost’.”
He granted an injunction noting that the "potential confusion and the risk of damage to Boost will be exacerbated while Optus expands the promotion of its Optus Internet Boost and Optus Mobile Boost features in television appearances and advertising, digital video advertising, radio interviews, social media advertising, digital media process and retail marketing".
Have something to say on this? Share your views in the comments section below. Or if you have a news story or tip-off, drop us a line at adnews@yaffa.com.au
Sign up to the AdNews newsletter, like us on Facebook or follow us on Twitter for breaking stories and campaigns throughout the day.