FEDERAL COURT OF AUSTRALIA

Educational Broadcasters Adelaide Incorporated v Australian Broadcasting Corporation [2016] FCA 1502

ORDERS

THE COURT ORDERS THAT:

1.    Until further order the respondent is restrained, whether by itself, its officers, servants or agents from directly or indirectly promoting, marketing, advertising or identifying itself, whether in writing, verbally or in electronic media as “Radio Adelaide” (in that sequence) whether or not those words are qualified by further words, signs or logos.

2.    The costs of the applicant’s application for urgent interlocutory relief are reserved.

3.    The applicant is to serve any expert evidence on which it wishes to rely by 24 February 2017.

4.    The respondent is to serve any expert evidence on which it wishes to rely by 24 March 2017.

5.    The applicant is to serve any expert evidence in reply by 3 April 2017.

6.    The directions hearing listed for 3 March 2017 be vacated.

7.    The proceeding be listed for further directions at 9:00am on 6 April 2017.

8.    The proceeding be listed for trial for six days, namely 18, 19, 24, 26, 27 and 28 April 2017.

9.    Liberty to apply.

10.     Costs otherwise reserved.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

CHARLESWORTH J:

INTRODUCTION

1    The parties to this action each operate radio stations broadcasting in Adelaide. They are in dispute over the respondent’s proposed use of the words RADIO ADELAIDE in connection with its broadcasting services.

2    The applicant, Educational Broadcasters Adelaide Incorporated (EBA), has recently become the owner of a community radio station business broadcasting on the frequency 101.5 FM (the Station). It acquired the Station from The University of Adelaide (University). The transfer of the assets of the Station was completed just a few days ago. Among the assets transferred to EBA was the ownership of a registered trade mark comprised of the words 5UV RADIO ADELAIDE in Class 38 (including “radio broadcasting services”) (Trade Mark).

3    EBA alleges that the Station has broadcast continuously from 1972 to 2001, initially under the name 5UV and then, from 2001 to 2003, under the name 5UV RADIO ADELAIDE and then, from 2003, under the name RADIO ADELAIDE.

4    The respondent Australian Broadcasting Corporation (ABC), is a public broadcaster continued in existence under s 5 of the Australian Broadcasting Corporation Act 1983 (Cth) (ABC Act). Among other operations, ABC broadcasts radio throughout Australia on different frequencies in each State and Territory. Until recently, it has broadcast radio in and around Adelaide under the name 891 ABC ADELAIDE on the frequency 891 AM.

5    From 9 January 2017, ABC intends to roll-out a rebranding program in connection with its radio services across Australia. It is intended that the service now known as 891 ABC ADELAIDE be named and marketed as ABC RADIO ADELAIDE. Radio services in other capital cities will be named by the same convention so that the service broadcast in Melbourne will be named ABC RADIO MELBOURNE, the service broadcast in Sydney will be named ABC RADIO SYDNEY and so on. The name is to be used aurally and visually, including by incorporation in a logo to which I will soon refer.

6    EBA alleges that ABC’s use of the words RADIO ADELAIDE in connection with its broadcasting services would infringe the Trade Mark and contravene s 18 and 29(1)(h) of the Australian Consumer Law (ACL) being Schedule 2 to the Competition and Consumer Act 2010 (Cth). EBA seeks (among other relief) an injunction to the effect that ABC be permanently restrained from using the words RADIO ADELAIDE to describe its products and services. The matter comes before me as duty judge for the limited purpose of determining EBA’s urgent claim for interlocutory relief.

LEGAL FRAMEWORK

Criteria for an interlocutory injunction

7    On EBA’s originating application, permanent injunctions are sought pursuant to s 125(1)(a) of the Trade Marks Act 1995 (Cth) (TM Act) or, alternatively, s 232 of the ACL. Section 23 of the Federal Court of Australia Act 1976 (Cth) confers power on this Court to grant an interlocutory injunction pending trial and judgment on EBA’s claims.

8    In Australian Broadcasting Corporation v O'Neill (2006) 227 CLR 57 (O’Neill), Gleeson CJ and Crennan J said at [19]:

…in all applications for an interlocutory injunction, a court will ask whether the plaintiff has shown that there is a serious question to be tried as to the plaintiff's entitlement to relief, has shown that the plaintiff is likely to suffer injury for which damages will not be an adequate remedy, and has shown that the balance of convenience favours the granting of an injunction. These are the organising principles, to be applied having regard to the nature and circumstances of the case, under which issues of justice and convenience are addressed. …

9    The requirement that an applicant for an injunction demonstrate a serious question to be tried is not a particularly onerous one. As Weinberg J said in Mobileworld Operating Pty Ltd v Telstra Corporation Ltd [2005] FCA 1365 (Mobileworld) at [23]:

Sometimes, on an application for interlocutory relief, a court is sufficiently able, on the evidence before it, to reach a conclusion as to particular facts or matters in dispute. However, it must be remembered that any such conclusion will be provisional, and by no means necessarily the same as that which is subsequently reached at the final hearing. The degree to which a court is prepared to investigate disputes of fact depends on their difficulty and on the other circumstances in question, and particularly on the extent of urgency or prospective hardship involved: ICF Spry, The Principles of Equitable Remedies (6th ed, 2001) (‘Spry’) at 466.

10    In assessing where the balance of convenience lies the Court must assess and compare the prejudice likely to be suffered by each party if an injunction is granted with that which is likely to be suffered if one is not granted: Lucisano v Westpac Banking Corporation [2015] FCA 243 at [7] (Gordon J).

11    As explained by Gummow and Hayne JJ in O’Neill (at [65]), an applicant for an interlocutory injunction must show a “sufficient likelihood” of success to justify, in the circumstances, the preservation of the status quo pending trial. The sufficiency of the likelihood depends upon the nature of the rights the applicant asserts and the practical consequences likely to flow from the order: see Beecham Group Limited v Bristol Laboratories Pty Limited (1968) 118 CLR 618 at 622 (Kitto, Taylor, Menzies and Owen JJ); Samsung Electronics Company Ltd v Apple Inc (2011) 217 FCR 238 (Samsung) at [59] (Dowsett, Foster and Yates JJ). It is in this respect that the criteria of “serious question to be tried” and “balance of convenience” interrelate, such that a more doubtful claim which nevertheless raises “a serious question be tried” may still attract interlocutory relief if there is a marked balance of convenience in favour of the claim: Mobileword at [20], Tait v P.T. Ltd as Trustee of the Scentre Tuggerah Trust [2015] FCA 1015 at [23] (Besanko J). However, the extent to which it is appropriate to examine the merits of an applicant’s claim for relief will always depend on the circumstances of the case: Australian Broadcasting Corporation v Lenah Game Meats Pty Limited (2001) 208 CLR 199 at [18] (Gleeson CJ).

12    ABC contends that it is necessary for EBA to show, on the present application, that damages would be an inadequate remedy, and that if that criterion is not fulfilled, no occasion arises for the Court to assess where the balance of convenience might lie. In other words, ABC contends, EBA must satisfy three essential criteria for the grant of an injunction: a serious question to be tried, irreparable harm not compensable by an award of damages and a favourable balance of convenience.

13    In Samsung the Full Court (Dowsett, Foster and Yates JJ) said at [61] – [62]:

61.    The requirement that, in order to obtain an interlocutory injunction, the plaintiff must demonstrate that, if no injunction is granted, he or she will suffer irreparable injury for which damages will not be adequate compensation (the second requirement specified by Mason ACJ in Castlemaine Tooheys at 153) was not mentioned in Beecham. Nor was it referred to by Gummow and Hayne JJ in O’Neill. Nonetheless, Gleeson CJ and Crennan J included that requirement in their articulation of the relevant ‘organising principles’ (at [19] in O’Neill). They also agreed with the explanation of those principles given by Gummow and Hayne JJ at [65]-[72] in the same case. One way of reconciling the views of Gleeson CJ and Crennan J with those of Gummow and Hayne JJ on this point is to treat ‘irreparable harm’ as one of the matters which would ordinarily need to be addressed in the Court’s consideration of the balance of convenience and justice rather than as a distinct and antecedent consideration. This has been the approach taken by some judges (eg Ashley J in AB Hassle v Pharmacia (Australia) Pty Ltd (1995) 33 IPR 63 at 76-77; Gordon J in Marley New Zealand Ltd v Icon Plastics Pty Ltd [2007] FCA 851 at [3]; Kenny J in Medrad Inc v Alpine Medical Pty Ltd (2009) 82 IPR 101 at [38]; and Yates J in Instyle Contract Textiles Pty Ltd v Good Environmental Choice Services Pty Ltd (No 2) [2010] FCA 38 at [55]-[64]).

62.    The assessment of harm to the plaintiff, if there is no injunction, and the assessment of prejudice or harm to the defendant, if an injunction is granted, is at the heart of the basket of discretionary considerations which must be addressed and weighed as part of the Court’s consideration of the balance of convenience and justice. The question of whether damages will be an adequate remedy for the alleged infringement of the plaintiff’s rights will always need to be considered when the Court has an application for interlocutory injunctive relief before it. It may or may not be determinative in any given case. That question involves an assessment by the Court as to whether the plaintiff would, in all material respects, be in as good a position if he were confined to his damages remedy, as he would be in if an injunction were granted (see the discussion of this aspect in Spry, The Principles of Equitable Remedies (8th ed, 2010) at pp 383-389, 397-399 and 457-462).

14    The Court held that the assessment of where the balance of convenience and justice lies will always require an assessment of the adequacy of damages as a remedy. However, to elevate “irreparable injury” into a separate and antecedent inquiry in every case would, the Court held, be to adopt a too rigid approach (at [63]).

15    I therefore do not accept ABC’s contention as a matter of law. It urges a too rigid approach. In the final analysis however, little, if anything, turns on the contention.

THE alleged facts

16    The following narrative represents the facts asserted by EBA for the purposes of its application for interlocutory relief.

17    The University lodged an application for the registration of the Trade Mark in May 2000. The Trade Mark was entered on the register of trade marks on 28 March 2001. At that time, the Station continued to broadcast under the name 5UV RADIO ADELAIDE on the frequency 530 AM. From 1 October 2001, the Station’s broadcast moved to the frequency 101.5 FM.

18    The University registered the business name RADIO ADELAIDE on 17 December 2003.

19    EBA claims that since 2003, the Station has broadcast and traded exclusively under the name RADIO ADELAIDE and otherwise by reference to a logo containing those words. The logo appears as follows:

20    As can be seen, the Station’s logo includes the frequency on which the Station broadcasts, as well as the word DIGITAL.

21    EBA was incorporated on 6 May 2016 for the purposes of acquiring and operating the Station. It has the following relevant objectives, as specified in its Constitution:

(a)    to hold Community Radio Broadcasting Licence SL4229 and any other telecommunications licences;

(b)    to operate a community broadcasting station on frequency 101.5MHz for an educational community interest according to the Broadcasting Services Act 1992 (Cth), the community broadcasting Codes of Practice and any other relevant legislation;

…

(d)    to operate the Association as a not for profit community institution and to undertake all measures necessary to provide a radio broadcasting service to encourage, enable and facilitate communication within the community and its surrounds by operating and developing educational and informative media activities which service a broad educational agenda;

(e)    in accordance with the Broadcasting Services Act 1992 (Cth) and community broadcasting Codes of Practice, to provide programs not adequately covered by existing broadcasters, including to encourage and develop the uses of radio and media for education, public affairs, social and cultural commentary, information, community issues, and entertainment;

…

(h)    to train, instruct, assist and support broadcasters in the production of program and audio content for transmission and distribution;

(i)    to conduct either solely or jointly entertainment, promotions, concerts, cultural activities, meetings, conferences, community information, seminars or courses on matters of interest related to the objects or operation of the Association and to publish either solely or jointly with others, program and other material relating to the objects of the Association;

22    EBA alleges that the University, being its predecessor in business, established a trading reputation in the words RADIO ADELAIDE, in the sense that those words are recognisable as a sign identifying the Station and the business operated by it. EBA relies on, at least, the following:

(1)    the use of the words in the Station’s logo;

(2)    the display of the logo in the windows of the Station’s premises since at least 2005, formerly at 228 North Terrace in Adelaide and later at its new premises in Cinema Place in Adelaide;

(3)    the display of the words RADIO ADELAIDE in large type face in the windows of the North Terrace premises independently of the logo;

(4)    the use of the phrase “You’re listening to Radio Adelaide” by its radio announcers several times during each broadcast;

(5)    the use of the words RADIO ADELAIDE and the logo in promotional material including banners, tents and leaflets;

(6)    references to the Station by the name RADIO ADELAIDE in publicly issued media releases, including in connection with community events supported by the Station;

(7)    its substantive audience of listeners as evidenced by statistical surveys and more informal interactions with listeners via social media.

23    As I have mentioned, ABC owns and operates radio stations throughout Australia. Its radio network relevantly consists of one station in each of Adelaide, Brisbane, Canberra, Darwin, Hobart, Melbourne, Perth and Sydney. ABC has, as its so-called master brands the initials ABC and a wavelength logo, depicted below.

24    Section 6 of the ABC Act forms the charter of ABC. The charter provides that ABC has the function of (among other things) broadcasting programs of an educational nature. Section 31 of the ABC Act provides that ABC shall not broadcast advertisements on any of ABC’s broadcasting services.

25    In September 2015, project work commenced for a proposed national rebrand for ABC’s localised radio services. The project included a research and discovery phase involving significant audience research and then the development of the new brand. A staged roll-out of the new brand is intended to commence on 9 January 2017. On the material before me it is unclear precisely how the stages of the roll-out might proceed as and from that date.

26    Ms Jocelin Abbey is ABC’s “Head of Radio & Regional Marketing”. She deposed as follows:

14.    The national rebranding will see the Respondent, in both visual materials and in verbal and written descriptions of ABC radio stations:

(a)    cease using the call sign and specific frequency of each particular local station (for example, ‘ABC Radio Adelaide’ is proposed to replace the currently used branding name ‘891 ABC Adelaide’);

(b)    use the brand name ‘ABC Radio’ at a national level and

(c)    use the brand ‘ABC Radio (CAPITAL CITY)’ at a local level.

27    According to ABC, the changes to its radio branding were prompted by changes in the way that consumers access content produced by ABC. On ABC’s research, the days of twiddling a dial to pick up the frequency of a favoured radio station are numbered. It is said that with alternative means of accessing radio content, consumers no longer relate a radio broadcasting service strongly (or at all) with its broadcast frequency. Audio content initiated on radio is now accessible on other media platforms, including online or by way of podcasts or “apps”. It is these changes in consumer behaviour that are said to have prompted ABC’s decision to remove references to radio frequencies from the naming conventions of all of its radio services throughout Australia. Instead, ABC proposes to rename its radio services by a name with three integers: ABC (as a master brand), Radio (as a reference to the medium) and (in this State) Adelaide (the locale). As I have said, the last of those integers will differ in each State and Territory. Consistency in the application of the naming convention across Australia is important to ABC. To that end, ABC has developed a series of logos, consistent in appearance, as follows:

28    The rebranding project is referred to in some of ABC’s marketing communications as a “brand revitalisation”. According to Ms Abbey:

15.    The national rebranding means that the words ‘Radio Adelaide’ will only ever be used by the Respondent:

(a)    where it is used descriptively on-air or otherwise, to refer to or describe the Respondent’s Adelaide radio station and always in combination with the word ABC; that is ‘ABC Radio Adelaide’; and

(b)    where it is used visually in promotional material or otherwise, the Respondent’s Adelaide radio station will be referred to as ‘ABC Radio Adelaide’ and/or will appear with the ABC Wave logo.

29    Ms Abbey deposed that a “nationally consistent identity” would make it easier for audiences to locate content, particularly audio content originating on ABC radio services. In context, Ms Abbey’s evidence suggests that listeners accessing content online will readily recognise the locality in which radio content has been produced and seek out that content by reference to their own capital city. That is supported by a document titled BRANDGUIDE, apparently produced by ABC’s marketing specialists to explain the new naming convention to those within ABC who will be required to use it. It states (among other things):

Our vision for Radio: our attributes, benefits, role, essence, and contact points – must reflect the connections our audiences have to their cities.

30    EBA first learned of ABC’s intentions when it received an email on 1 December 2016 from Mr Graham Bennett, ABC’s South Australian Content Manager. The email states:

Dear Rob,

I would like to advise as a matter of courtesy an exciting change for the ABC Local Radio Network that will take effect in the new year.

From early January 2017, the ABC Local Radio network is rolling out an updated visual and aural identity, including a name change.

The naming convention is being applied to all capital city stations in the ABC local radio network, ‘ABC Radio <capital city>’, meaning 891 ABC Adelaide will be known as ‘ABC Radio Adelaide’.

There are a few reasons why we do not anticipate this change to cause confusion to Adelaide audiences:

•    the programming/ content and aural branding as well as the visual identity of the stations are very different. The ABC is one of Australia’s most recognised and respected brands and the evolved station name emphasises the ‘ABC Radio’ in ‘ABC Radio Adelaide’;

•    for traditional radio listening, ABC Radio Adelaide is on the AM band, whereas Radio Adelaide is on the FM band;

•    in the digital space, availability of radio streams on third party platforms allow for each station’s respective visual branding to set them apart;

•    on DAB+ digital radio, the full station names are listed; and

•    when searched online, it is very obvious which station is part of the ABC.

If you have any queries please don’t hesitate to get in touch.

Regards

Graeme Bennett

31    On the same day ABC publicly announced by media release that it would roll-out a new “visual and aural identity” in a staged process from 9 January 2017. Then, on the following day, Mr Bennett was interviewed by morning presenters on the currently named 891 ABC ADELAIDE about EBA’s response to ABC’s rebranding intentions. When asked a question to the effect of whether ABC realised EBA would take issue with the rebranding proposal, Mr Bennet said: “Well I guess we discussed what the outcomes might be and certainly we know that there might have been some discomfort”.

32    These proceedings were commenced a week later.

33    ABC’s proposed rebranding appears to have ignited passions among the Station’s listeners. EBA submits that the intensity of conversations on social media and other platforms concerning the issues arising in the litigation evidences, of itself, the Station’s following, the degree to which the words RADIO ADELAIDE are recognisable by the Station’s listeners, and the likely diminution in the value of the words by ABC’s use of them. I have, in the final analysis, accorded little weight to evidence of the public debate to which EBA refers. The debate rages under the artificial light of this very litigation and may not truly reflect the recognition by all relevant consumers of the words RADIO ADELAIDE in connection with the Station.

34    Who then are those listeners? And what is the trade context in which the competing claims are to be resolved at trial? There was, on this application, sufficient evidence to show that the markets in which ABC and EBA operate are not so disparate nor so overlapping that there could be no likelihood of confusion. The following prima facie points may be distilled from the surveys adduced by both parties:

(1)    In an average week in 2016, of all people aged 15+ in SA:

(a)    31% listen to community radio;

(b)    40% listen to ABC and/or SBS;

(c)    3% listen to community radio exclusively.

(2)    44% of listeners to community radio do not listen to ABC or SBS radio services.

(3)    In an average week in 2016, weekly listeners of community radio listen for an average of 15.1 hours.

(4)    In an average week in 2016, 69% of Australians accessed ABC’s services.

(5)    In 2014, 891 ABC Adelaide had an average weekly reach of 207,000 listeners, or 18.8% of the population.

(6)    In 2015, 891 ABC Adelaide had an average weekly reach of 216,000 listeners, or 19.4% of the population.

(7)    In 2016, 891 ABC Adelaide had an average weekly reach of 210,000 listeners, or 18.6% of the population, 28% of whom are aged 10 — 49, and 72% of listeners are aged 50+.

(8)    An estimated 44,000 people aged 15+ listened to the Station in 2008.

(9)    An estimated 26,000 people aged 15+ listened to the Station in 2012.

(10)    In an average week in 2016, weekly listeners of the Station listen for an average of 13.6 hours.

35    The statistics to which I have referred are necessarily crude. They indicate the kind of evidence the parties may be expected to adduce at trial and at least demonstrate that there is a prima facie case that there is considerable commonality between consumers of the Station and consumers of ABC’s radio services.

A SERIOUS QUESTION TO BE TRIED

Trade mark infringement

36    Subject to defences, a registered trade mark will be infringed when a person uses, as a trade mark, a sign that is substantially identical with, or deceptively similar to, the registered trade mark: s 120(1) of the TM Act.

37    Whether a sign is used “as a trade mark” is to be determined by reference to the definition in s 17 of the TM Act:

A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

38    EBA’s case is that ABC’s proposed brand is substantially identical with or deceptively similar to the Trade Mark. The concept of deceptive similarity is defined in s 10 of the TM Act as follows:

… a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

39    Although ABC may contend at trial that it does not intend to use its impugned sign as a trade mark¸ it did not suggest that aspect of the case was so compelling that it rendered EBA’s infringement claim inarguable. The real issue is whether there is a serious question to be tried on the question of deceptive similarity, as that term is defined.

40    The definition of “deceptive similarity” requires an assessment to be made of the “effect or impression” that would be produced on the minds of persons of ordinary intelligence and memory by the normal use of the registered mark: Australian Woollen Mills Limited v F. S. Walton & Company Limited (1937) 58 CLR 641 (Australian Woollen Mills) at 658 (Dixon and McTiernan JJ); The Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 415 (Windeyer J); Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 at [49] — [50] (French J). It is that effect or impression which forms the basis of the comparison to be made with what the alleged infringer has actually done. In Wingate Marketing Pty Limited v Levi Strauss & Co (1994) 49 FCR 89, Gummow J described the relevant comparison as follows (at 128 — 129):

… (i) The comparison is between any normal use of the plaintiff’s mark comprised within the registration and that which the defendant actually does in the advertisements or on the goods in respect of which there is the alleged infringement, but ignoring any matter added to the allegedly infringing trade mark; for this reason disclaimers are to be disregarded, price differential was considered irrelevant ... [as were] the differences in use by the parties of colour and display panels, and ... the differences in the respective sections of the public to whom the goods were sold. (ii) However, evidence of trade usage … is admissible but not so as to cut across the central importance of proposition (i). …

41    Similarly, in Australian Woollen Mills, Dixon and McTiernan JJ said at 658:

… the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect of impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression of recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then the similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. …

42    What is required is a comparison between the mark of the registered owner and that of the alleged infringer. The mark of the registered owner includes all fair and normal uses of the mark which includes, as a pertinent aspect of this case, both its aural and visual uses. Although a normal and fair use of a registered mark might include a visual presentation in which some words are given more emphasis than others, it is the whole of the registered mark that is to be compared. At least on the trade mark infringement claim, the relevant comparator at trial is the word mark 5UV RADIO ADELAIDE, not the words RADIO ADELAIDE standing alone.

43    I note at this juncture that on 1 December 2016 and 19 December 2016 respectively, EBA lodged applications to register, as trade marks, the words RADIO ADELAIDE and its visual logo. I am not presently concerned with the signs forming the subject matter of those applications, although the fact of the applications, on ABC’s case, nevertheless bears on the present claim for interlocutory relief for reasons I will soon explain.

44    An issue may arise at trial as to whether EBA’s claimed reputation in the Trade Mark may be taken into account in determining the question of deceptive similarity. In C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; (2000) 52 IPR 42 the Full Court (Ryan, Branson and Lehane JJ), having reviewed the authorities on the question, said at [52]:

… in assessing the nature of a consumer’s imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration. …

45    On the material presently before me, EBA would not demonstrate the degree of familiarity ubiquity that is required so as to enable its reputation to be taken into account in comparing the Trade Mark with ABC’s impugned sign. That is not fatal to EBA on the present application. It simply means that the Court should identify whether there is a serious question to be tried on the trade mark infringement action by reference to the Trade Mark (in all of its fair and normal uses), independently of the reputation that may be stored in it.

46    A critical issue at trial will be the impression left by the Trade Mark in light of its first word 5UV. That feature of the Trade Mark cannot be ignored.

47    The same may be said of ABC’s impugned sign. As I have observed, ABC does not propose to use the words RADIO ADELAIDE in isolation. Rather, the word ADELAIDE is, on ABC’s case, to be regarded as a merely descriptive locality tack-on to what is the true brand RADIO ADELAIDE. The use of descriptive words in a registered trade mark, it contends, renders it very difficult for the owner of such a mark to succeed against an alleged infringer using the same descriptive words to describe the same or similar services.

48    ABC may ultimately succeed in that submission. However, I am not presently concerned with determining the merits of the issue. It is sufficient for present purposes to note that EBA’s prospects of success are impacted, perhaps significantly so, by the presence in the Trade Mark of the call sign 5UV and the presence in the impugned sign of ABC’s so-called master brand. I am not, however, satisfied that EBA’s case is so affected by that issue that there could be no serious question to be tried. At trial, it will be necessary to undertake the relevant comparison having regard to all of the surrounding circumstances, including the trade context in which the parties’ respective services are provided.

Australian Consumer Law

49    The claim alleging contravention of the ACL raises different considerations. The provisions alleged to have been contravened relevantly provide:

18    Misleading or deceptive conduct

(1)    A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

…

29    False or misleading representations about goods or services

(1)    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 by any means of the supply or use of goods or services:

…

(h)    make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation; or

…

50    The likelihood of deception or confusion may, I accept, be affected by the circumstance that the Station broadcasts on the FM band, whereas ABC’s radio services are broadcast or otherwise accessible either on the AM band or by other communication platforms on which the radio bandwidth is irrelevant. ABC contends that this circumstance renders it unlikely that a consumer of radio would mistake the two, resulting in the direct diversion of audience members. The prima facie force in that submission must be acknowledged, however, for present purposes I am not satisfied that there is no serious question to be tried on the likelihood of the relevant consumer being misled or deceived. The same may be said of other submissions advanced by ABC in relation to all other elements of the alleged contravention. Although the submissions fairly attack the merits of EBA’s claims, they are not so as to render EBA’s claims inarguable or even to demonstrate that they are so weak that no interlocutory injunction should lie.

51    I place considerable weight on the trade context in which the parties’ competing claims are to be decided. The relevant context is radio services. Radio services are, by their nature, delivered orally and received aurally, even if they may be marketed by visual uses of words and devices on paper, on websites or on other tangible promotional materials. At trial the issue of confusion will, in my preliminary view, turn more on perceptions of the ear than of the eye. When their aural uses are compared, the phrases RADIO ADELAIDE and ABC RADIO ADELAIDE share a much closer resemblance than the visual words and devices forming the subject matter of the parties’ submissions. EBA’s case regarding ABC’s proposed aural use of the words presently appears stronger than its case regarding visual uses, although there is, in my view, a serious question to be tried in relation to all impugned varieties of use.

BALANCE of convenience

52    It is convenient to summarise EBA’s claimed prejudice by reproducing [24] of its written submissions:

24.    The Applicant submits that any use of the Proposed Name or the Proposed Logo by the Respondent will very probably cause significant harm to the Applicant’s commercial position, reputation and goodwill because:

24.1.    the name ‘Radio Adelaide’ is embedded in the station’s identity and reputation over the past 15 years and that intellectual property is a matter of significant, possibly immeasurable, value to the Station. The Respondent must appreciate the value because it seeks to take advantage of the name and (if the evidence of Ms Abbey is admitted) has paid a significant amount to capture the value by use of the Proposed Name and Proposed Logo;

24.2.    the Applicant is at risk of losing listeners. This might occur for various reasons, but including confusion which impermissibly diverts listeners of the Applicant to the Respondent and disaffection of existing or future listeners because they believe that the Applicant is now associated with the Respondent. The use of the letters ‘ABC’ or the ‘wave’ sign will probably only exacerbate the latter, not improve clarity of the provenance of the name;

24.3.    there will be a corresponding decrease in the Applicant’s capacity to generate revenue and the Applicant’s commercial value and ability to continue as a community broadcaster now and in the future will be put at risk;

24.4.    there will be an increased need to differentiate the Applicant from the Respondent with the costs attendant upon that in circumstances that favour the size of the Respondent over the services of the Applicant to the local South Australian community, particularly those based in Adelaide and its surrounds;

24.5.    the Applicant has recently secured licensing, intellectual property and other rights from the University of Adelaide. It did so in the absence of any forewarning by the Respondent about its strategy that it has planned for in excess of 14 months. The Applicant’s future business plans are thereby put at risk;

24.6.    the Applicant, as a relatively small community-run radio station, is far less capable of bearing the cost of rebranding as compared to the Respondent. In particular, it will be noted that the Respondent is prepared to abandon what might be assumed be a valuable brand (‘891 ABC Adelaide’) in favour of uniformity but is unprepared to secure the commercial value of the brand it seeks to appropriate by normal commercial methods.

53    That submission prompted a series of related contentions from ABC: some relating to a factual issue concerning reputation in the words RADIO ADELAIDE (an issue relevant to both liability and remedy), others going to the legal question of whether EBA would suffer “irreparable harm” such that damages would not be an adequate remedy.

54    ABC contends that EBA’s claimed reputation in the name RADIO ADELAIDE ought to be regarded as a recent contrivance; an exaggeration of evidence and submissions devised only to frustrate, by these proceedings, ABC’s lawful attempts to revitalise its own brand. Reliance was placed on EBA’s late applications to secure registration of trade marks comprising its logo and the words RADIO ADELAIDE standing alone. The fact that no previous steps had been taken by EBA or its predecessor in business to protect those marks was said to support an inference that EBA’s claimed reputational loss was not genuine. Weighing against that submission is the evidence adduced by EBA as to its history of use of the words RADIO ADELAIDE which, I find, is sufficient for the present purpose of demonstrating that there is a serious question to be tried about the recognition of those words in the relevant market in connection with the Station. More particularly, there is sufficient evidence for present purposes to show that the Station identified itself aurally by the words RADIO ADELAIDE to a not insubstantial audience. Even if irrelevant to the trade mark infringement action, that circumstance will, at trial, be relevant on EBA’s claims under the ACL. On the materials presently before me, I do not accept for the purposes of this application that EBA’s claims about the recognition of its business name are fanciful or contrived or that it is inarguable that it has, by its broadcasting or other community based activities, generated no trading reputation in the words RADIO ADELAIDE at all.

55    EBA’s reputational harm, ABC then submitted, should be understood as harm occasioned by diminishment of a trader’s good repute in the market place, analogous to harm that might be caused to the reputation of an individual by the publication of defamatory words. Harm of that kind, the contention goes, was a species of loss unrecognisable in trade mark law and not compensable under s 126 of the TM Act. The only harm EBA could show, if any, was the diminution in the value of a proprietary asset and that harm, ABC submitted, was not irreparable because it was readily compensable by an award of damages.

56    Further on the discrete topic of affiliation, ABC submitted that EBA could not show loss or damage in any event by reason of any confusion radio consumers might have about whether EBA and ABC are associated because the perception (even if mistaken) of a trade or other connection between the two service providers would not be harmful to EBA in the relevant market.

57    I do not agree.

58    The word “reputation” in the present legal context, is better understood as the ready recognition of a sign in the marketplace as an indicator of the trade origin of goods or (as here) services. When EBA speaks of reputational harm compensable under the ACL, I understand its claim to be one involving the diminution in the value of that quality of recognition and its commercial value manifested by, among other things, customer lure and loyalty. It is the wrongful exploitation of the recognition in the words RADIO ADELAIDE that is the gist of the alleged ACL contraventions. The wrongful exploitation may take the form of diversion of custom, but may also take the form of an inaccurate suggestion of affiliation. The issue is not whether an award of damages may be made in respect of loss of that kind, even if the task of assessing loss may be attended with considerable difficulty. Rather, the issue is whether damages would be an adequate remedy such that EBA’s relief ought to be confined to damages: see Samsung at [63] as extracted above.

59    If EBA’s claims as to liability were made out at trial, I do not consider an award of damages would be an adequate remedy in terms of final relief granted under either the TM Act or the ACL. The TM Act confers upon EBA a cluster of statutory rights. Central to those rights is the conferral of a monopoly in the use of the Trade Mark, albeit a monopoly strictly limited in accordance with the terms of the statute and the registration itself. The TM Act, on its proper construction, recognises that incursion upon that statutory right is, in and of itself, harm that may be prevented by an injunction before any economic loss is suffered or proven. To confine the owner of a registered mark to an award of damages would be to ignore the inherent benefit of the limited monopoly granted by the TM Act which the TM Act envisages the registered owner will be free to exploit without unlawful interference by an infringer. Thus, although damages may be awarded in respect of a proven infringement, the confinement of the remedy to the monetary award would, at least in the present case, be an inadequate remedial response to any actual or threatened infringing conduct.

60    The same may be said of that aspect of EBA’s claim under the ACL alleging confusion in the minds of consumers as to the existence of an affiliation between the Station and ABC. ABC’s contention that EBA has not adduced positive evidence of actual harm flowing or likely to flow from such confusion to my mind misses the point. The nature of harm, in my view, is inherent in the statutory proscription: just as in private life one ought to be free to choose one’s friends, in commercial life one ought to be free to choose one’s trading affiliates. There may be many matters influencing such affiliations other than matters going to character. A permanent injunction may lie to restrain an unwanted and inaccurate perceived affiliation in the market whether or not the alleged contravener can otherwise be proven to be a trader of questionable repute. Interlocutory relief may be granted on the same basis. ABC’s own document titled BRANDGUIDE evidences the commercial value inherent in consumer perceptions and the importance, at least to the ABC, that consumer perceptions be carefully and deliberately altered, so far as that can be done with words, pictures, sounds and impressions. The wrongful alteration of a customer’s perceptions causes damage that is intangible, difficult to define and difficult to measure. All of these considerations support a conclusion that damages would not be an adequate remedy for EBA in relation to its claims under s 18 and 29(1)(h) of the ACL should it be successful proving ABC’s liability at trial.

61    I turn now to consider the prejudice that may be suffered by ABC if the relief sought by EBA were to be granted.

62    My first observation is that each word in the phrase RADIO ADELAIDE, considered separately, is descriptive in nature, even to the point of banality. ABC operates radio services in and around Adelaide. In those circumstances, the Court should be slow to restrain, on an interlocutory application, the use of each of those words. Weighing against that consideration is the combination of the words in their stated order. On first blush, there is a liveliness about the phrase RADIO ADELAIDE that is absent from each of its ordinary nouns considered in isolation.

63    Next, I am satisfied that there is value to the ABC in rolling out its rebranding project in a nationally consistent way. The relief sought by EBA would not permit ABC to title its Adelaide based radio service in accordance with a new nationally consistent naming convention. I am satisfied by reference to Ms Abbey’s evidence and by reference to the BRANDGUIDE that disruption to the “brand revitalisation” may cause ABC to suffer inconvenience either of that kind, or by reason of having to delay the roll-out of the rebranding project across the nation pending the prosecution of EBA’s claims to final judgment. However, on the materials before me, it is difficult to be any more specific than that. To explain why, it is necessary to consider two paragraphs of Ms Abbey’s affidavit which are the subject of objections by EBA which I am to rule upon in the course of giving these reasons. On the topic of prejudice to ABC, Ms Abbey deposes:

41.    If the national rebranding project was to be reconsidered, then much of those hard costs would be wasted, and additional work would need to be performed to recreate the work with revised national branding. I estimate that a short-term delay to this project would cost the Respondent approximately $80,000 in staff and internal resources, as well as a potential further $25,000 in costs regarding signage, collateral and uniforms, depending on the level of changes required to the logo mark.

42.    In additional to estimated hard costs, there will also be an impact on ABC audiences, which will compound year on year as audiences continue to access ABC content online. For example, to distinguish between ‘TV’ content and ‘Radio’ content, the descriptor of the medium needs to be used, i.e. ‘I heard that great interview on ABC Radio Adelaide’. This becomes the way audiences identify where the content was generated from, it is used to navigate within the ABC ecosystem. Therefore, using the descriptor of ‘Radio’ is a crucial element of the brand’s naming convention.

64    Those paragraphs followed a deposition (admitted in evidence over EBA’s objection) that the actual hard costs of ABC’s national rebranding project exceed $400,000.00 including expenditure relating to South Australia exceeding $70,000.00.

65    Objection was taken to the admissibility of the evidence given at [41] and [42] on the ground that it constituted “unqualified opinion”. Reliance was placed on s 76(1) of the Evidence Act 1995 (Cth). EBA submitted that Ms Abbey was not sufficiently qualified to express an opinion estimating the cost of a “short term delay” to the project. I accept that submission. However, it would not follow that the Court could not readily infer in all of the circumstances that ABC would suffer some measurable financial loss if an order restraining it from rolling out its rebranding project in South Australia was now made.

66    If I am wrong in my assessment that Ms Abbey has insufficiently deposed to qualifications or experience enabling her to express an admissible opinion on the subject of likely financial loss, the evidence in [41] in my opinion suffers from a more fundamental shortcoming. It is not apparent from the whole of ABC’s evidence, including the affidavit of Ms Abbey, precisely what ABC would do if the relief sought by EBA were granted. The factual assumptions underlying Ms Abbey’s estimate of loss are simply not stated or proven. The Court cannot fairly assess the likely degree of financial loss without knowing, as a question of fact, how ABC would “reconsider” the roll-out. ABC submitted that it was under no obligation to make a decision prior to obtaining judgment on this application as to how it would respond, in practical terms, to any order with injunction that might be made. Although I accept there is no such obligation on ABC’s part, it remains, as a matter of evidence, that there is no factual basis established for the estimates given by Ms Abbey of ABC’s likely financial prejudice. Although ABC is perfectly entitled to delay its decision on its likely course of action, and entitled to refrain from informing the Court of its likely course of action, its evidence of likely financial loss cannot be admitted in a factual vacuum. I therefore do not read the second sentence of [41] of Ms Abbey’s affidavit.

67    Paragraph 42 must also be read against the circumstance that the Court has not been told whether ABC would persist with a roll-out of its new brand in capital cities other than Adelaide, with what Counsel for ABC nicely described as a “jerry-rigged” naming solution for the Adelaide market. That circumstance, however, affects the weight of the evidence given at [42] and not its admissibility. I infer from [42] that the ABC will be delayed in obtaining the benefits it perceives will flow (both to itself and to its audience) by use of the new naming convention. Against that prejudice, it should be borne in mind that ABC has not adduced evidence that there is presently any pressing need to introduce the proposed changes on 9 January 2017. Its rebranding project has been under consideration since at least September 2015. There is no evidence of any commercial urgency attending it. Moreover, there is positive evidence that ABC users do not presently seem to have difficulty accessing content broadcast on 891 AM on platforms other than the analogue AM bandwidth. On the morning radio program on which Mr Bennett was interviewed, it was said that about a third of listeners had tuned in, so to speak, on a device other than an analogue radio.

68    That interview is relevant to the assessment of the balance of convenience for other reasons. I infer from the content of the interview and from the content of Mr Bennett’s email to EBA of 1 December 2016 that ABC predicted that its new naming convention would not be well received by EBA. There is no affidavit of Mr Bennett or any other witness rebutting that inference. ABC does not claim that it did not know of the existence and name of the Station whilst it devised its new naming convention. EBA adduced positive evidence (being ABC News reports) indicating that ABC is well aware of the Station and its name. In that circumstance ABC was in a position to choose when it announced its intentions to EBA relative to the time when it announced its intentions to the world at large and relative to the planned brand roll-out. Mr Bennett’s email evidences that ABC turned its mind to the very issue EBA now raises by this litigation, namely the potential for confusion. Insofar as there may, as the result of an injunction, be a delay in the preferred date of ABC’s new brand roll-out, I place less weight on that delay as I might otherwise have done had ABC disclosed its intentions to EBA at an earlier time. I stress that ABC was under no legal obligation to inform EBA of its intentions at all. However, its decision to disclose its intentions when it did nonetheless affects the weight to be accorded to its complaint that it will suffer the expense by a sudden change imposed at the eleventh hour.

69    The balance of convenience favours EBA. It seeks to protect what it asserts to be an established and long-held brand and a registered trade mark against the aspirations of the ABC to introduce a new naming convention. There is no suggestion by ABC that EBA would not make good on its undertaking as to damages should it ultimately be unsuccessful in making out its claims at trial.

70    The application is allowed. I will hear from the parties as to the appropriate form of orders.

Associate:

Dated:    23 December 2016