Federal Court of Australia

Boost Tel Pty Ltd v Singtel Optus Pty Ltd [2023] FCA 213

ORDERS

THE COURT NOTES THAT:

1.    The applicant gives the following undertaking:

(a)    to submit to such order (if any) as the Court may consider to be just for the payment of compensation (to be assessed by the Court or as it may direct) to any person (whether or not that person is a party) affected by the operation of the order or any continuation (with or without variation) of the order; and

(b)    to pay the compensation referred to in (a) to the person affected by the operation of the order.

THE COURT ORDERS THAT:

Injunction

2.    Subject to order 3, until the conclusion of the final hearing or further order, the respondent whether by its employees, agents or howsoever otherwise, be restrained with effect from 12.00pm from 17 March 2023 from promoting, advertising, supplying and/or selling internet or mobile telephone services under or by reference to the product names “Boost”, “Internet Boost”, “Mobile Boost”, “Optus Boost”, “Optus Internet Boost” or “Optus Mobile Boost” (the Impugned Terms).

3.    It shall not be a breach of order 2 for the respondent to issue invoices to its customers bearing any of the Impugned Terms where those customers have, prior to 12.00pm 17 March 2023, purchased services under or by reference to any of the Impugned Terms.

4.    The question of costs of the interlocutory application be reserved for consideration by the trial judge.

5.    Liberty be granted to the applicant to apply to Justice Thawley in relation to order 4.

Suppression orders

6.    “Annexure A” to the orders made on 13 March 2023 be amended as set out in “Annexure A” to these orders.

7.    Orders 3 and 4 of the orders made on 13 March 2023 be dissolved.

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

ANNEXURE A

1.    Confidential Exhibit “CBL-2” to the Affidavit of Cameron Bradley Luby affirmed 6 March 2023 (Luby Affidavit).

2.    Confidential Exhibit “CBL-3” to the Luby Affidavit.

3.    Exhibit 2 tendered on 13 March 2023.

REASONS FOR JUDGMENT

THAWLEY J:

INTRODUCTION

1    On 22 February 2023, Singtel Optus Pty Ltd made an announcement about its introduction of two new features available on its product, launched in May 2022, called “the Living Network”. These new features were “Optus Internet Boost” and “Optus Mobile Boost”. The Living Network comprises a series of features available only to Optus’s mobile and internet customers on existing plans through the My Optus mobile app. The Living Network is aimed at improving customer experience. Although there was some debate about the date, it is sufficient to proceed on the basis that “Optus Internet Boost” and “Optus Mobile Boost” were launched on 31 January 2023 and 15 February 2023, respectively. These features are intended to boost a customer’s internet speed and mobile connection for a “priority data experience”.

2    Optus’s announcement was not a welcome one to Boost Tel Pty Ltd. Boost has provided telecommunications services in Australia for 23 years, including by selling prepaid mobile services and refurbished devices. From 2000 to 2013, it provided services via the mobile telephone network operated by Optus. Since then, Boost has provided services via the Telstra network. Telstra provides the applicant with wholesale access to its network for on-sale to Boost’s customers. It currently has over 800,000 services in operation in Australia. Boost is in direct competition with Optus. Telstra is also in direct competition with Optus.

3    Boost is the registered owner of a number of Australian trade mark registrations, including Australian Trade Mark No 2099306 for BOOST in classes 9, 25, 28 and 38 which covers, among other things, telecommunications and communication services (the Boost Word Mark). It is also the owner of other trade marks including figurative trade marks which contain the words BOOST MOBILE (collectively, the Boost Trade Marks).

4    The BOOST brand is used across to the whole of Boost’s business, and it considers the brand to be its most valuable asset. Boost has invested over $10 million a year in building and promoting its telecommunications business under its BOOST brand.

5    On Friday, 24 February 2023, Boost’s lawyers requested that Optus cease offering services under the “Boost”, “Internet Boost” and “Mobile Boost” brands. The letter called for undertakings to be given by 5pm on 24 February 2023, failing which Boost would commence proceedings in this Court seeking an interlocutory injunction to restrain Optus’s conduct.

6    On the same day, Optus’s lawyers responded by stating that they required further time to respond. No undertakings were given.

7    Boost commenced proceedings on Monday, 27 February 2023. The matter came before the duty judge and, ultimately, the question of whether interlocutory relief should be granted was heard yesterday and today.

8    Boost sues Optus for trade mark infringement, misleading or deceptive conduct and passing off. However, it relies only on the trade mark case in seeking an interlocutory injunction restraining Optus from promoting, advertising, supplying and/or selling internet or mobile telephone services under or by reference to the words “Boost”, “Mobile Boost”, “Internet Boost”, “Optus Boost”, “Optus Internet Boost” and “Optus Mobile Boost” (the Impugned Terms). Boost’s Concise Statement, filed on 28 February 2023, refers also to “Optus Mobile Boost beta” and “Mobile Boost beta”.

9    Boost relied on the affidavits of its Chief Executive Officer, Mr Warren Hardy dated 27 February 2023 and 8 March 2023 and its solicitor, Mr Matthew Swinn dated 24 February 2023. Optus relied on three affidavits dated 6 March 2023: one by its Head of Consumer Marketing, Mr Cameron Luby; one by its Head of Living Network, Mr Nicholas Bailey; and one by its solicitor, Mr John Fairbairn. There was no cross-examination.

PRINCIPLES FOR INTERLOCUTORY RELIEF

10    The legal principles applicable to the grant of interlocutory relief of the kind presently sought were mostly not contentious. There are two main inquiries. As explained by Gummow and Hayne JJ in Australian Broadcasting Corporation v O’Neill [2006] HCA 46; 227 CLR 57 at [65] (and see also at [19] per Gleeson CJ and Crennan J), those main inquiries are whether:

(1)    the applicant has a prima facie case in the sense of a sufficient likelihood of success to justify the granting of the interlocutory relief which is sought; and

(2)    the inconvenience or injury the applicant would be likely to suffer if an injunction were refused outweighs the injury the respondent would suffer if the injunction were granted.

11    In Warner-Lambert Co LLC v Apotex Pty Ltd [2014] FCAFC 59; 106 IPR 218 at [70], the Full Court (Allsop CJ, Jagot and Nicholas JJ) stated:

Whether an applicant for an interlocutory injunction has made out a prima facie case and whether the balance of convenience favours the grant of such relief are related questions.  It will often be necessary to give close attention to the strength of a party’s case when assessing the risk of doing an injustice to either party by the granting or withholding of interlocutory relief especially if the outcome of the interlocutory application is likely to have the practical effect of determining the substance of the matter in issue or if other remedies, including an award of damages, or an award of compensation pursuant to the usual undertaking, are likely to be inadequate. 

12    As noted in the first sentence of that passage, the two main inquiries cannot be conducted independently of each other. This is because “an apparently strong claim may lead a court more readily to grant an injunction when the balance of convenience is fairly even” and “[a] more doubtful claim (which nevertheless raises ‘a serious question to be tried’) may still attract interlocutory relief if there is a marked balance of convenience in favour of it” – see: Bullock v Federated Furnishing Trades Society of Australasia (No 1) [1985] FCA 258; 5 FCR 464 at 472 per Woodward J (Smithers and Sweeney JJ agreeing at 467 and 469 respectively); GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Ltd [2013] FCAFC 102; 305 ALR 363 at [81(j)] (Bennett, Jagot and Griffiths JJ).

13    As noted in the balance of that passage of Warner-Lambert, if the grant or refusal of an injunction is likely to effectively resolve the commercial dispute between the parties, or determine the matter in favour of one of the parties, the likelihood of the applicant’s ultimate success (or the strength of its prima facie case) should be closely scrutinised. I will say more about this later.

14    In assessing the balance of convenience, the Court should assess and compare the prejudice and hardship likely to be suffered by the respondent, third parties and the public generally if an injunction is granted, with that which is likely to be suffered by the applicant if no injunction is granted: GlaxoSmithKline at [81] per Bennett, Jagot and Griffiths JJ; see also Samsung Electronics Co v Apple Inc [2011] FCAFC 156; 217 FCR 238 at [55], [62] and [66]. The question of whether damages will be an adequate remedy will ordinarily be considered as part of the balance of convenience: Samsung Electronics at [61].

15    The two main inquiries are addressed separately for convenience.

PRIMA FACIE CASE

16    In its Concise Statement, Boost makes claims of trade mark infringement under ss 120(1) and 120(2) of the Trade Marks Act 1995 (Cth) (TM Act), misleading and deceptive conduct and passing off. For its prima facie case in support of its application for interlocutory relief, Boost relied only upon trade mark infringement under s 120(1) of the TM Act.

Legal context

17    Section 20 of the TM Act includes:

20 Rights given by registration of trade mark

(1)    If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the exclusive rights:

(a)    to use the trade mark; and

(b)    to authorise other persons to use the trade mark;

in relation to the goods and/or services in respect of which the trade mark is registered.

Note 1:    For registered owner see section 6.

Note 2:    For use see section 7.

Note 3:    In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

(2)    The registered owner of a trade mark has also the right to obtain relief under this Act if the trade mark has been infringed.

Note:    For what amounts to an infringement of a trade mark see Part 12.

18    It follows that Boost has the exclusive right to use and authorise the use of the Boost Word Mark, BOOST, in relation to the goods and services for which it is registered. As Burley J stated in Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808; 158 IPR 9 at [229]:

The registered owner is entitled to a monopoly in the use of the words in whatever form they are rendered, whether in stylised or plain form, with or without capitalisation or partial capitalisation and whether or not design elements are used.

19    “Trade mark” is defined in s 17 as “a sign used, or intended to be used, to distinguish … 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”.

20    A trade mark is a sign used to indicate the origin of the services to which it is applied, or a connection in the course of trade between the services and the person who applies the mark to the services: E & J Gallo Winery v Lion Nathan (Aust) Pty Ltd [2010] HCA 15; 241 CLR 144 at [41]-[43]; Shell Co (Aust) Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; 109 CLR 407 at 425 (Kitto J). Thus, use “as a trade mark” is use of the mark as a “badge of origin”: Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721; 96 FCR 107 at [19]; E & J Gallo at [43].

21    Section 120(1) provides:

120 When is a registered trade mark infringed?

(1)    A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.

Note 1:    For registered trade mark see section 6.

Note 2:    For deceptively similar see section 10.

Note 3:    In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

22    As noted earlier, the Boost Word Mark is registered in various classes, including in “telecommunications and communications equipment, apparatus and systems” in class 9 and “telecommunication and communication services” in class 38.

23    It was not in dispute that the use by Optus of the Impugned Terms occurred in providing telecommunications services.

24    Optus contended that there was no prima facie case of infringement, because: (a) Boost had failed to demonstrate that Optus used the Impugned Terms “as a trade mark”; and (b) the Impugned Terms (apart from the word BOOST) are neither substantially identical nor deceptively similar to the Boost Trade Marks.

Use as a trade mark

25    The “use” of a trade mark for the purposes of s 120(1), having regard to s 17, is use of the mark to indicate a connection in the course of trade between goods or services and the person who applies the mark to the goods or services. The question whether a sign has been used as a trade mark is an objective one and it is to be determined from the perspective of the consumer taking into account the context of the use of the mark: Shell at 425; Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] FCA 402; 30 FCR 326 at 339-340. It is to be determined with resort to common sense: Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd [2004] FCA 438; 61 IPR 242 at [29].

26    The parties accepted as accurate the articulation of relevant principles in Nature’s Blend Pty Ltd v Nestle Australia Ltd [2010] FCAFC 117; 272 ALR 487 at [19], where the Full Court stated:

[19]    In considering the reasons of the primary judge and the arguments put on appeal, it is necessary to bear in mind the principles governing whether Nestlé used “luscious Lips” as a trade mark. They may be summarised as follows:

1.    Use as a trade mark is use of the mark as a “badge of origin”, a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else: Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107 at [19]; E & J Gallo Winery v Lion Nathan Australia Pty Limited (2010) 265 ALR 645 at [43].

2.     A mark may contain descriptive elements but still be a “badge of origin”: Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 347- 348; Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd (1996) 135 ALR 192; Aldi Stores Ltd Partnership v Frito-Lay Trading GmbH (2001) 54 IPR 344 at [60].

3.     The appropriate question to ask is whether the impugned words would appear to consumers as possessing the character of the brand: Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 422.

4.     The purpose and nature of the impugned use is the relevant inquiry in answering the question whether the use complained of is use “as a trade mark”: Johnson & Johnson at 347 per Gummow J; Shell Company at 422.

5.     Consideration of the totality of the packaging, including the way in which the words are displayed in relation to the goods and the existence of a label of a clear and dominant brand, are relevant in determining the purpose and nature (or “context”) of the impugned words: Johnson & Johnson at 347; Anheuser-Busch, Inc v Budejovický Budvar, Národní Podnik (2002) 56 IPR 182.

6.     In determining the nature and purpose of the impugned words, the Court must ask what a person looking at the label would see and take from it: Anheuser-Busch at [186] and the authorities there cited.

27    Two of Optus’s submissions on use as a trade mark could have been understood as suggesting that the question is “whether Optus has used the Impugned Terms to distinguish its services from the services of [Boost]”. Optus made clear, however, that it accepted that the correct question is whether Optus has used the Impugned Terms as a trade mark, namely to distinguish its services from those provided by any other person. The question of trade mark use does not hinge upon whether the impugned mark was used specifically to distinguish the user’s goods or services from those of the registered owner of the mark – see: Coca-Cola at [20].

28    Boost relied in argument on two schedules to its submissions, which are reproduced in these reasons as Schedule 1 and Schedule 2. Although these schedules are included for convenience, with one exception, the Court has undertaken its analysis of use by reference to the evidence on which those schedules were based:

    Schedule 1 is based on Optus’s press release on 22 February 2023;

    Schedule 2 is a screen shot showing an example of Optus’s use of the words and phrases on its website.

29    The exception is that the evidence does not in fact indicate the domain name which is depicted in Schedule 2. I have taken into account the domain name in addition to the evidence.

Summary of Boost’s submissions

30    In respect of both Schedule 1 and Schedule 2, Boost submitted that the uses identified in red boxes were not purely descriptive, but rather possessed the character of a brand, in the sense of a “badge of origin”.

31    In respect of Schedule 1, Boost emphasised Optus’s use of the word “product” in the phrases the “Internet Boost product” and the “Optus Boost products”. Boost contended this supported the conclusion that “Internet Boost” and “Optus Boost” were being used as trade marks or badges of origin concerning the underlying product.

32    In respect of Schedule 2, Boost emphasised that the word “Boost”:

    was used in prominent large font, as part of the capitalised product name for Optus’s services and submitted that it was not being used as a mere common noun;

    appeared in capitalised form, in the middle of sentences and submitted this was a use that was not consistent with its normal usage in the English language; and

    where it was used on its own, was in a distinctive colour, yellow.

33    Boost also drew attention to the fact that the words and phrases “Boost”, “Mobile Boost” and “Optus Mobile Boost”, were a prominent feature of the webpage depicted in Schedule 2.

34    Boost referred to Optus’s uses of “boost#mobile” in the domain name and submitted that the domain name directs a consumer to a webpage advertising the “Optus Mobile Boost” service. Optus also uses “boost#internet” in a domain name.

35    Boost noted that Optus treats as a “brand” the names it gives to some of the other tools or features of the Living Network. In this regard, Boost noted that Optus has sought registration of a number of these names as a trade mark: Game Path, Donate your Data, Optus Wifi Secure and Optus Pause.

Summary of Optus’s submissions

36    Optus submitted that none of the Impugned Terms were used as a trade mark. It contended that the use of the trade mark, OPTUS, functions as a trade mark but that the word “Boost” in the Impugned Terms does not distinguish commercial origin.

37    Optus submitted that: “Boost” is an ordinary English word and means, relevantly “to increase; push up”; the function of the Optus Mobile Boost tool is to increase mobile connection for a priority data experience; the function of the Optus Internet Boost tool is to increase internet speed; a recipient of those features will have received a boost in relation to their internet services and/or mobile connection for a “priority data experience”.

38    In relation to Schedule 1, Optus submitted:

(a)    The mere capitalisation of the words “Internet Boost” and “Mobile Boost” in the press release, and the descriptor of them as “products” does not give them the character of a badge of origin;

(b)    The uses highlighted by Boost are purely descriptive, particularly in the context of a press release explaining the products’ functions: to allow customers to “maximise their nbn internet speed” and to “prioritise their mobile data connection”, both “maximise” and “prioritise” being synonymous with “boost”;

(c)    The first use of “boost” after the heading (“allow customers to boost the speed”) is a descriptive use, reinforcing that the names of the new features or tools simply identify what they are and what they do. Such uses recur through the press release; and

(d)    It is apparent from the text of the press release read as a whole that the two tools or features the subject of the launch are but two in a suite of other tools or features also descriptively named by reference to their function. The clearest examples of these are Unlimited Data Day, Donate Your Device, Call Translate, and Call Notes.

(e)    The fact that Optus has sought registration of other feature names in the Living Network as trade marks is irrelevant to the assessment of whether Optus has used the Impugned Terms as trade marks.

39    In relation to Schedule 2, Optus submitted:

(a)    The linking of a domain name to a website page which contains advertising material promoting services for which a trade mark is registered may give rise to use as a trade mark, but that is not this case. The full domain is optus.com.au/living-network/boost#mobile. This is different to a domain name which merely uses the word “boost” with the prefix “www” and the suffix “.com” which do not substantially affect the identity of the trade mark; referring to: Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; 186 FCR 519 at [155];

(b)    Neither the full domain name nor boost#mobile is a term pleaded by the applicant to infringe or in respect of which the applicant seeks relief; and

(c)    There was no evidence as to how one navigates to the domain name, so that Boost’s submission that “the domain name directs a consumer” to a webpage advertising the “Optus Mobile Boost” services should be given no weight.

(d)    The real question is the context or setting in which Optus uses the Impugned Terms on its website; referring to: Shell at 422; Pinnacle Runway Pty Ltd v Triangl Ltd [2019] FCA 1662; 375 ALR 251 at [180]. The context in this case includes: (i) consumers likely will have arrived at the webpage extracted in Schedule 2 after first entering “optus” into a search engine, such as Google; (ii) consumers would then be taken to the optus.com.au homepage; (iii) consumers would then navigate that homepage by using the drop down menu; (iv) if consumers clicked on “Shop”, they would be taken to the Optus Living Network homepage. On that homepage, the opening blurb states, inter alia, “[w]ith a range of helpful tools in My Optus app, the Optus Living Network puts you in control so you can do so much more than talk”. It then sets out the various tools, namely Optus Network Pulse, Call Translate, Call Notes, Optus Pause, Unlimited Data Day, Optus Boost, Game Path, Donate Your Data, Optus Eco, Donate Your Device, as well as Optus Boost, with a brief descriptor of each of them, the descriptor for “Optus Boost” being “giving you the power to boost at home with Internet Boost, or on the go with Mobile Boost, when you need a little extra”. Once the consumer clicks on the “Optus Boost” link, they are taken to the page.

(e)    When these matters are considered together, it is likely that consumers would understand that Optus offered a range of tools through its Living Network and they would understand that Optus was the trade source of the tools. Optus submitted that there is no basis to contend that consumers would perceive that “Optus Boost” (as opposed to OPTUS on its own) operated as a badge of origin. Optus argued that the Impugned Terms should be seen, objectively, as being used to differentiate products rather than by way of signifying trade origin. In this regard, Optus relied upon Pinnacle, particularly at [175] and [180] to [182].

40    Optus referred to various other aspects of the webpage extracted at Schedule 2 which were said to reinforce Optus’s descriptive use of the word “boost” to describe the Living Network features. Optus submitted that the mere capitalisation of the phrase “Optus Mobile Boost” cannot be determinative. According to Optus, the use of the yellow font, which appears prominently across the whole of the website, is merely a use of the palette that Optus has consistently used in all marketing and advertising of the OPTUS brand; it does not make the words “Optus Mobile Boost” or “Boost” a brand or badge of origin.

41    An example of the use of the word “Boost” with a capital letter and the use of yellow font on the web page associated with the domain name which incorporates the words “boost#mobile” referred to earlier is as follows:

Consideration

42    As noted earlier, the Impugned Terms are: “Boost”, “Mobile Boost”, “Internet Boost”, “Optus Boost”, “Optus Internet Boost” and “Optus Mobile Boost”.

43    It may be accepted that the word “boost” is descriptive and that the words “mobile” and “internet” are ordinary words. However it must be recognised that a mark may have a descriptive element but still serve as a badge of trade origin – see: Johnson at 347; Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd [1996] FCA 48; 135 ALR 192; Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH [2001] FCA 1874; 190 ALR 185. The word “Boost” is in fact registered as a trade mark and Optus does not dispute its status as such.

44    When assessing trade mark use, it is the use of the whole mark which must be assessed in context: Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co [1983] FCA 143; 48 ALR 511. Here, only one of the Impugned Terms is constituted only by the word BOOST.

45    It may be accepted that the use of capital letters and coloured font are not “determinative” as Optus submitted. However, that is a part of the way that the new features – Optus Mobile Boost and Optus Internet Boost – have been presented and forms part of the context which must be considered in determining, objectively from the perspective of a consumer, whether the Impugned Marks were being used as trade marks.

46    Assessing the evidence from which Schedules 1 and 2 have been drawn objectively from the perspective of the consumer, taking into account the context and applying common-sense, I am satisfied that it is arguable that each of the Impugned Terms is being used as a sign or mark to indicate a connection in the course of trade between the services offered and Optus, and to distinguish those services from services provided by others, that is, that they are each used as a “badge of origin”. I consider the argument particularly strong in relation to the reference to “Boost” on its own, as shown at [41] above.

47    It is arguable that readers of the press release (from which Schedule 1 is drawn) would think that what Optus is showing them in using the words “Boost”, “Mobile Boost”, “Internet Boost”, “Optus Boost”, “Optus Internet Boost” and “Optus Mobile Boost” is a mark by which they may know that the relevant product is one which is offered by Optus – see: Shell at 425. The same may be said of the use of Impugned Terms on the web page from which Schedule 2 was drawn.

48    As to the various Impugned Terms where Optus has incorporated the word “OPTUS”, the fact that Optus has added its name does not protect against a conclusion that the mark as a whole is being used as a trade mark. It is plainly arguable, for example, that consumers are being asked to acquire the new “Optus Boost products” partly because they are described as “Boost” products: Mark Foy’s Ltd v Davies Coop & Co Ltd [1956] HCA 41; 95 CLR 190 at 205. As Williams J stated in Mark Foy’s at [205] (footnotes omitted):

They are being invited to purchase goods of the defendants which are to be distinguished from the goods of other traders partly because they are described as “Tub Happy” goods. In Aristoc Ltd v Rysta Ltd Viscount Maughan cites the following appropriate passage from the judgment of Lord Greene MR in Saville Perfumary Ltd v June Perfect Ltd: “In an infringement action, once it is found that the defendant’s mark is used as a trade mark, the fact that he makes it clear that the commercial origin of the goods indicated by the trade mark is some business other than that of the plaintiff avails him nothing, since infringement consists in using the mark as a trade mark, that is, as indicating origin.”.

Needless to say, if the defendant uses the words of the plaintiff’s trade mark as indicating origin it is still an infringement notwithstanding that the defendant always adds his own name: Kerly on Trade Marks, 7th ed (1951), p 445.

Deceptive similarity

49    Section 10 of the TM Act provides:

10 Definition of deceptively similar

For the purposes of this Act, 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.

50    Deceptive similarity occurs if there is a risk that the result of the use of the Impugned Terms will be that a number of persons will be caused to wonder whether it might not be the case that the two products came from the same source: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; 91 CLR 592 at 608. In Goodman Fielder at [331], Burley J stated:

The degree of confusion required is not an actual probability of deception such as is required in an action for passing off. Rather, it is “sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source”: Southern Cross at CLR 595 per Kitto J at first instance, upheld on appeal to the High Court at CLR 608; IPR 468 (Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ). See also Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; 45 IPR 411; [1999] FCA 1020 (Registrar v Woolworths) at [43], [50] per French J, Tamberlin J agreeing at [104].

51    A mere possibility of confusion will not be enough – there needs to be a real risk or danger that the use of the mark will cause some prospective or potential purchasers of the services to wonder whether the services come from the same source: Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; 93 FCR 365 at [50].

52    The essential task is one of trade mark comparison from an imperfect recollection of the marks and an estimation of the effect of them on the minds of consumers: Shell; Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; 58 CLR 641. The degree of similarity is not to be determined by a side-by-side comparison of the marks but by comparing the actual or potential consumers’ impressions of the claimed infringing mark with the consumers’ impressions of the registered trade mark based on their memory of the features of the registered trade mark. In Goodman Fielder at [329], Burley J stated:

The approach to the question of whether one trade mark so nearly resembles another as to be likely to deceive was said by the High Court in Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 at 538 (Dixon, Williams and Kitto JJ) to be well settled and summed-up by Parker J, as he then was in Re Application by Pianotist Company Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777 in the following passage:

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion — that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods — then you may refuse the registration, or rather you must refuse the registration in that case.

53    At [333], his Honour stated:

The premise underlying the enquiry concerning deceptive similarity under s 120(1) or s 120(2) is that purchasers are assumed to have knowledge of the mark alleged to have been infringed when they are placed in the context of the circumstances of purchasing the alleged infringer’s goods. However, any reputation that may have accrued to the trade mark owner by dint of use of its mark is generally to be set to one side for the purpose of this comparison: see CA Henschke at [45]–[52].

54    Optus submitted that, apart from certain instances where Optus has deployed the word “Boost” without any other surrounding words (which Optus accepts is substantially identical to the trade mark 2099306 for BOOST), the other Impugned Terms are not substantially identical or deceptively similar to the Boost Trade Marks, as is required by s 120(1) of the TM Act.

55    Optus submitted that the adding of “Optus” and/or “Internet” and/or “Mobile” to BOOST creates a distinct impression from that created by BOOST. Optus submitted that the word BOOST alone in the context of telecommunications services generally does not have any specific meaning. However, Optus submitted, each of “Internet Boost” and “Mobile Boost” is an immediately understandable descriptive phrase, referring to an increase in some quality of an internet or mobile service.

56    According to Optus, the presence of OPTUS in some of the Impugned Terms avoids any possible confusion. Optus submitted that, in assessing deceptive similarity, it is not legitimate to ignore OPTUS in the Impugned Terms, particularly in circumstances where OPTUS has a degree of notoriety or familiarity of which judicial notice can be taken, referring to Woolworths at [61].

57    Optus submitted that this is not a case where the consumer will recognise that both OPTUS and BOOST have independent significance when used in the Impugned Terms “Optus Internet Boost” and “Optus Mobile Boost”. That is, this is not a case in which a consumer would think that Optus and Boost were in some form of joint commercial undertaking.

58    Optus submitted that the average consumer of telecommunications services confronted with the composite signs would perceive OPTUS to have striking significance, and the words “Internet Boost” and “Mobile Boost” to be ordinary English words used in a purely descriptive way. In this respect, Optus emphasised the use of the word “boost” in various ways in the telecommunications industry, referring in particular to searches made by Optus’s solicitor and contained in an exhibit to his affidavit.

59    Optus submitted, by reference to Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157; 168 IPR 42 at [48], that the addition of a word can give a composite phrase a distinct sound and meaning. It relied in particular on the addition of the words “Internet” and “Mobile” to the word “Boost”.

60    In Swancom, the primary judge had placed particular significance on the descriptive meaning of the word “jazz” and considered it to leave a “more striking impression” in comparison to the words “corner” and “hotel”. The present facts are not especially analogous. Indeed, leaving aside the addition of the mark OPTUS, it is the word “Boost” which is arguably more distinctive than the words added, namely “internet” and “mobile”. Further, when a comparison is made between “Mobile Boost” and the figurative mark BOOST MOBILE, the analogy falls down because there is only a reversal of words, not an addition. The submission has no application to the comparison between the Boost Word Mark and Optus’s use of the word “Boost” on its own.

61    In my view, it is arguable that each of the Impugned Terms is deceptively similar to one or other of the Boost Trade Marks, the main one being the Boost Word Mark. It is arguable, for example, that the use of the word “Boost” (often with a capital letter, sometimes in yellow) will cause consumers to wonder if that which Optus is offering is associated with Boost – see: Southern Cross at 595-6; Coca-Cola at [39] and [42].

62    By way of further example, 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.

63    It is to be accepted that, where it is used, the word OPTUS cannot be ignored in the Impugned Terms. That is because the comparison is to be made between the whole of the relevant marks. However, the mere fact that differences are readily apparent does not translate into a necessary conclusion that marks are not deceptively similar. In Vivo International Corp Pty Ltd v Tivo Inc [2012] FCAFC 159; 294 ALR 661 at [145] to [146], Nicholas J stated:

[145]    There may be situations in which a mark may be found to be deceptively similar to another mark even though the differences between them would be readily apparent to the consumer: see, for example, the trade marks in issue in In the Matter of John Fitton & Co Limited's Application (1949) 66 RPC 110 (JESTS and EASYJESTS) (UK Reg.); Tonka Corporation v Chong (1994) 29 IPR 253 (MONOPOLY and MUSICOPOLY) (Reg.); Telstra Corporation Ltd v Yellownet Corporation (1999) 44 IPR 415 (YELLOW PAGES and YELLOWNET) (Reg.); and Caterpillar Inc v Amco (Vic) Pty Ltd (2000) 49 IPR 407 (CAT and LANDCAT) (Reg.).

[146]    In Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Limited (1993) 42 FCR 227 (POLO and POLO CLUB) Burchett J held (at 230) that POLO CLUB was deceptively similar to POLO because (inter alia) “someone who knew of a ‘Polo’ product, upon seeing a similar product selling under the name ‘Polo Club’ would be quite likely to think it was a particular version of the product which could be described as the Club version.” Similarly, in Pfizer Products Inv v Karam (2006) 237 ALR 787 (VIAGRA and HERBAGRA) Gyles J held that the mark HERBAGRA was deceptively similar to the mark VIAGRA because a substantial number of members of the public would think products bearing the former mark were a “herbal version” of VIAGRA: see para [38] of Gyles J's reasons.

64    The word “Boost” is descriptive, and is used in parts of the material on this application descriptively, but it is also a distinctive word. It is arguable that the use of the word BOOST in the Impugned Terms is likely to cause confusion and that the confusion is not dissolved by the word OPTUS in those Impugned Terms which contain the word OPTUS– see, for example: Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 265; 42 FCR 227 at 232 (Burchett J).

65    The same observations apply to use of the word “Internet” and “Mobile” where those words are used in the Impugned Terms: the use of the distinctive word “Boost” is the problem and the confusion is arguably not dissolved by adding the word “Internet” or “Mobile”.

66    These conclusions follow whether or not it is permissible to take Optus’s reputation into account in the way Optus submitted.

67    It is unnecessary to deal with the further submission made by Boost, that a number of the Impugned Terms apart from BOOST – namely “Internet Boost” and “Mobile Boost” – are substantially identical, as to which see: Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512; 396 ALR 633 and Henley Arch Pty Ltd v Henley Constructions Pty Ltd [2021] FCA 1369; 163 IPR 1.

Section 122(1)(b)(i) of the TM Act

68    Section 122(1)(b)(i) of the TM Act provides:

122 When is a trade mark not infringed?

(1)    In spite of section 120, a person does not infringe a registered trade mark when:

…

(b)    the person uses a sign in good faith to indicate:

(i)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; …

69    Optus submitted that the availability of that defence should be weighed in the balance in assessing whether Boost has established a prima facie case and, if so, the strength of that prima facie case.

70    Although Optus refers to s 122(1)(b) as a “defence”, and it is often referred to in that way, it is not a defence in the strictest sense. Section 122 works together with s 120 to define when a trade mark is infringed and when a trade mark is not infringed, as the headings to those sections indicate.

71    If Optus can show that s 122(1)(b) applies, then there is no infringement and it would theoretically be unnecessary to inquire whether there would have been infringement under s 120. For that reason, it is necessary to consider the application of s 122(1)(b) when it is raised, as it is here, in connection with a consideration of whether infringement is established on a prima facie basis for the purposes of interlocutory relief.

72    Optus submitted that the inquiry under s 122(1)(b)(i) is whether the respondent has used the sign in good faith to indicate the intended purpose, or some other characteristic of the goods in question, which is a factual question referring to: Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 235; 129 IPR 482 at [296].

73    Optus submitted that the facts suggest that this is what has occurred here:

    the word “boost” was the name given to the new feature by the Optus Product team, and the descriptive nature of that name was consistent with the Product team’s usual practice in relation to the development of a new feature or tool such as those deployed on the Living Network to refer to it in a descriptive way to help build understanding of the initiative within Optus;

    once the products had been largely developed, the Consumer Marketing Team, headed by Mr Luby, was engaged to determine the name of the feature or of the tool, in collaboration with the Product team and senior leadership;

    ultimately, the name was decided to be retained as a consensus was reached that this was the best name that could be thought of at the time and described the function and purpose of the tool in a short punchy way; and

    the mere fact that over ten years ago Boost partnered with Optus, and Optus was aware of Boost’s presence in the market, does not give rise to an inference that Optus lacked good faith.

74    Optus submitted that there was no evidence of any intention to deceive anybody or any intention to make use of the goodwill which has been acquired by the applicant, referring to Baume & Co Ltd v A H Moore Ltd [1958] Ch 907 at 921 per Romer LJ.

75    All of the issues presently being considered have arisen with a degree of urgency and are being decided at an interlocutory stage before discovery. The question of good faith lies largely within Optus’s knowledge. At this point, leaving aside Exhibit 1 to which I will come, Boost can only point to the objective circumstances known to it. Boost submitted that good faith was an issue, because Optus has been directly involved with the BOOST-branded business from 2000 to 2013. Optus had other ways to refer to its services, including “Up”, “Boom”, “Power”, “VIP”, “Express”, “performance-on-demand” and “priority-on-demand”. In Boost’s submission, Optus chose to use BOOST with full knowledge of Boost’s BOOST-branded business and trade mark.

76    The objective circumstances include that Optus knew of the existence of Boost, it being a significant participant in the telecommunications industry with which Optus had previously been in a commercial relationship and which is now a competitor. It is unlikely not to have occurred to a commercial entity like Optus that its use of the word Boost would, at the very least, attract the attention of Boost, but more probably, that it would result in some form of dispute. This conclusion finds some support from an examination of Exhibit 1 to which I will refer in more detail later. Quite how this all might play out in relation to good faith and s 122(1)(b)(i) is unclear at this interlocutory stage.

77    In any event, leaving aside questions of good faith, there is a reasonable argument that the word “Boost” was not being used “purely” descriptively – see: F H Faulding & Co Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd [1965] HCA 72; 112 CLR 537 at 543-4 (not relevantly disturbed on appeal); Angoves Pty Ltd v Johnson [1982] FCA 119; 43 ALR 349 at 354 (Franki J) and 375 (Fitzgerald J).

78    I take into account the potential application of s 122(1)(b)(i) of the TM Act in considering the strength of the prima facie case. I am unpersuaded that s 122(1)(b)(i) provides a strong answer to the prima facie case of infringement under s 120(1).

Conclusion on prima facie case

79    The services offered in relation to the Impugned Terms are in the telecommunications industry as are the registered services in respect of the Boost Trade Marks. Boost has established a prima facie case that the Impugned Terms are being used by Optus as a trade mark. Boost has also established a prima facie case that the Impugned Terms are deceptively similar to one or more of the Boost Trade Marks. There is a reasonable argument that s 122(1)(b)(i) of the TM Act does not alter this result. I will return to say something more about the strength of the prima facie case later in these reasons.

BALANCE OF CONVENIENCE

80    Mr Hardy’s affidavit included the following, most of which was received only as evidence of his belief:

46    I consider that consumers are likely to be misled and that this confusion will result in significant and irreparable harm to Boost including in the following ways.

(a)    I consider that Boost's value and goodwill associated with the Boost branding (and Boost Marks) … will be diminished. As I discussed above, I am aware through my role and experience with Boost that the Boost Marks are significant brand assets for Boost and that Boost has significantly invested in the Boost Marks and Boost branding since at least 2000. Relatedly, the use of the Boost branding by Optus gives Optus a “free ride” on Boost's goodwill that has been developed and maintained at a significant cost.

(b)    I consider that Boost's current or future customers could acquire or seek to acquire services from Optus in the mistaken belief that Optus is affiliated with or licensed by Boost or that alternatively the BOOST Services are, in fact, provided by Boost.

(c)    In particular, I consider that customers could readily be misled that Boost has entered into a commercial relationship with Optus or that the product features associated with Boost, including its superior geographic mobile coverage could be accessed by purchasing this Optus product, due to the need for MVNO's [Mobile Virtual Network Operators] to resell network capacity within Australia and the fact that Boost and Optus have previously been in a commercial relationship. If this occurs, the consumer is likely to attribute whatever experience they have with Optus, including any negative experiences, to Boost.

(d)    I consider that Boost's current customers could be mistaken that they no longer have access to the Telstra network leading to significant customer dissatisfaction. Further, new customers may be discouraged from joining Boost under the belief that other competitors have better access to the Telstra network than Boost. By way of example, annexed to this affidavit and marked Annexure WH-14 a copy of a review article between Boost and ALDI mobile recommending Boost over ALDI mobile as it is the only mobile phone company to have access to Telstra's full network. Accordingly, I consider that this confusion would have a detrimental impact to Boost's business, as Boost's main competitive advantage in the market is the Boost brand and its unique partnership with Telstra.

(e)    If the Boost brand and goodwill is diluted, I am concerned that this could significantly harm Boost's ongoing relationship with Telstra and could have an impact on the renewal of the Telstra Partnership. This would significantly harm Boost's business and revenue as Boost's entire business model rests on its relationship with Telstra (and its ongoing access to the Telstra network).

(f)    Optus' use of the Boost brand significantly impacts Boost's ability to clearly and effectively market its Boost brand to the public (and distinguish its services from those of Optus) and compromises Boost's ability to exclusively use its brand in its future campaign and promotions to the detriment of the customer journey being delivered by Boost in connection with the Boost brand. Boost currently has a significant pipeline of brand promotional activity and the use of the Boost branding by Optus would significantly drive confusion in relation to these campaigns.

(g)    Optus' use of Boost branding has the potential to curtail Boost's use of the BOOST Marks in future additional goods and services, including the ability to use BOOST in conjunction with another word or sub-brand.

(h)    Lastly, 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.

47    If Optus is not restrained from using the Boost brand and was allowed to continue promoting its services under the Boost brand while awaiting a decision from the Court in relation to infringement, I consider that there would be irreparable harm to the distinctiveness and value of the Boost brand, as this would result in two competitors in the market using an identical brand in relation to identical services. In my view, consumers would no longer perceive the Boost brand as distinctive of one trade source (ie Boost) alone.

48    Even if the Court were, following a trial, to restrain Optus' use of BOOST, MOBILE BOOST, INTERNET BOOST, OPTUS BOOST, OPTUS MOBILE BOOST, OPTUS MOBILE BOOST BETA and MOBILE BOOST BETA, I am concerned that the harm suffered by Boost in the intervening period would be irreparable. In particular:

(a)    once a consumer has formed a view that there is an association between Optus and Boost, it is likely to be difficult to change that view. I am aware from my 30 years' marketing experience that associations formed in the mind of consumers are often long-lasting and difficult to correct, which could have ongoing harm including for the reasons set out in paragraph 46 above.

(b)    even if Optus rebrands the BOOST Services, some consumers who were aware of the former name may continue to hold the view that it continues to be or at least previously was affiliated with Boost.

49    I am concerned that the harm I describe above will be very difficult, if not impossible, for Boost to quantify including because of the challenge in quantifying:

(a)    goodwill (and its reduction);

(b)    the effect on consumer's purchasing decisions, if confused; and

(c)    the effect on consumer satisfaction.

50    For these reasons, I believe there is a high degree of risk of consumers being misled into believing there is a connection between the services provided by Optus and the goods and services provided by Boost.

81    Optus submitted:

    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”, as is the risk that consumers could readily be misled by Optus’s promotion of the new Living Network tools into thinking that Boost has entered into a commercial relationship with Optus; and

    Boost’s assertion that Optus’s use of the Impugned Terms will impact Boost’s ability clearly and effectively to market its Boost brand to the public is exaggerated, particularly in circumstances where there is evidence that the word “boost” is commonly used in relation to the marketing of telecommunications services.

82    It may be accepted, in relation to Schedule 2, that many consumers would have navigated their way to the web page because they are existing Optus internet or mobile customers. However, they are not the only consumers likely to view such a page. The page can be accessed without navigating to it via the Optus home page and might be accessed by consumers who are not existing Optus customers. Nor is the web page the only way that consumers will come to learn of Optus’s new services, as the press release informing Schedule 1 demonstrates. That press release was presumably used to inform the market generally, which plainly enough includes Boosts’ existing and prospective customers.

83    In my view, there is a risk of confusion being created in consumers assuming there is a connection or association between Optus and Boost. One of the advantages of Boost over various other resellers is that it offers its services across the full Telstra network. I am satisfied that where confusion is caused, there is also a risk of damage to the Boost brand given that it is likely that some consumers would have chosen Boost precisely because of its network coverage. Boost also has concerns in relation to being associated with Optus by reason of Optus’s recent data breach and associated negative media attention. Damage could come in the form of not obtaining a prospective customer or losing an existing customer.

84    The Boost Word Mark is a valuable asset and is the “umbrella brand” or the “house mark” for its business in a similar way as Optus’s OPTUS trade mark is its central mark. As noted earlier, Boost has invested significantly in the name which forms the central brand of its operations and has done so for many years.

85    The two new “Boost” services which Optus is introducing in connection with its “Living Network” constitute only two out of twelve or thirteen components of that service.

86    I accept Boost’s submission that it has “a considerable business interest at stake” (see Medrad Inc v Alpine Medical Pty Ltd [2009] FCA 949; 82 IPR 101 at [76] per Kenny J), whereas Optus seeks to introduce a new product to the market, and “has incurred setting up and preparation costs well aware of the risk they may be wasted” (see Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth and Another [2009] FCA 595; 61 IPR 339 at [66] per Sundberg J).

87    In my view, there is merit in the argument that Optus’s use of the word “BOOST”, an example having been given earlier at [43], will have a negative impact on the distinctiveness and, therefore, value of the Boost brand. This impact is one which would be real, potentially quite significant, and inevitably difficult to assess in monetary terms. Whilst it might be said that the matters about which Boost presently complain are within a confined but significant compass, regard must also be had in assessing balance of convenience to what is likely to occur in the future in the absence of the grant of an injunction.

88    Optus does not propose to cease use of the Impugned Terms pending hearing and, indeed, apparently proposes to increase use of them over the next few months, including a significant “ramp up” in March 2023. Mr Luby’s evidence included:

31.    Over the course of the next few months, Optus plans to expand the promotion of its Optus Internet Boost and Optus Mobile Boost features or tools. Plans for a majority of marketing and promotional activities have already been put in place, with media spots having been booked well in advance of the launch. In particular, this will include:

(a)    television appearances and advertising;

(b)    digital video advertising;

(c)    radio interviews;

(d)    advertising on social media;

(e)    digital media;

(f)    brochures;

(g)    direct to consumer communications; and (h) retail marketing, in the form of visuals and videos.

At page 2 of Confidential Exhibit CBL-2 is a copy of the 'quarter 4' launch plan for the Optus Internet Boost and Optus Mobile Boost features or tools, which shows a significant ramp up of Optus' marketing campaign in March 2023. Quarter 4 in the launch plan covers the period from 16 January 2023 to 31 March 2023.

89    Optus criticised what it described as an absence of “persuasive evidence before the Court that [Boost] has suffered, or will suffer, any tangible loss”. The evidence has to be assessed in context, however, and a part of the context is that, appropriately, relief has been sought early and at a time before future losses manifest themselves by reason of future events. What is required is an appropriate prediction as to likely future events, being events which are necessarily not yet capable of proof by direct evidence. It is reasonably likely that it will be difficult to determine in monetary terms the damage which Boost would suffer should the injunction not be granted. The Boost brand will become less distinctive as Optus’s promotion of Optus Internet Boost and Optus Mobile Boost ramps up. Where confusion is caused, prospective customers might not be gained or existing customers might choose to leave Boost in favour of some other service provider. It is likely to be difficult to assess or establish actual losses in the event infringement were ultimately made out at a final hearing. Consumers are likely to take a variety of matters into account and most do not approach their decision-making in an analytical way such that reliable evidence might be given about the reasons for a decision.

90    Mr Luby and Mr Bailey give evidence about the logistical difficulties, financial losses and inconvenience Optus will suffer if the injunction is granted, namely:

    the making of front-end and back-end changes to the My Optus app and the Living Network website to remove all references to the Impugned Terms, which would require the work of a combination of developers, testers, delivery managers, user-interface designers and release managers;

    the engagement of program managers and external vendors to assist with changes to the Optus billing systems and Customer Relationship Management Systems;

    the cancellation of pre-booked advertising and re-allocation to less impactful uses;

    undertaking the process of coming up with new names for the features or tools which would possibly involve customer research and engagement with Optus’s external branding agency, as well as obtaining the relevant internal stakeholder approvals;

    Mr Luby’s evidence was that the only option available to Optus would be to change the name of the features or tools permanently;

    creating changes to other promotional material;

    creating and sending updates to Optus’s customers informing them about the new name;

    redoing all marketing and promotional materials, including the ‘how to’ video for the Optus Internet Boost tool that is used to explain how to access the tool; and

    changes to the script and the delay which would be caused to the schedule for the shooting of a television commercial featuring the tools and also a further ‘how to’ video for the ‘Optus Mobile Boost’ tool.

91    Optus submitted that this would require the removal of the tools for a period of four to eight weeks, which would be highly disruptive. Optus submitted, and I accept, that the direct cost of these changes is not prohibitive and that what is more significant is the reputational damage that Optus will suffer as a result of the injunction.

92    Optus submitted, and I accept, that the effectiveness of its promotional campaign for the new features would be compromised, and the likelihood of consumers taking up the features diminishes, if there were a pause in the offering and the names changed. Mr Bailey estimated the impact on Optus’s business of an injunction would be in excess of $3.5 million, although accepted that this was difficult to quantify. The estimate of $3.5 million is unreliable. However, just as Boost has difficulties in quantifying reputational damage, so does Optus. I accept that there is likely to be reputational damage of substance caused to Optus if the injunction is granted.

93    I have taken into account Optus’s evidence of the immediate costs of the injunction and the fact that it can anticipate reputational damage. However, sympathy on that front is somewhat diluted by the fact that Optus must have been aware of the risk in choosing – from the various words it says it considered to describe the services it was offering – the central trade mark of one its competitors.

94    It would be commercially naïve to think that Optus did not closely consider the risks, if not even the eventuality, which is now playing out. The evidence is that Optus did indeed consider Boost’s trade mark when considering use of the word “Boost”. The evidence included Exhibit 1, a “Marketing Brief” dated 20 May 2022. This described the “creative task” as being the identification of new features which would bring the opportunity “to consider the ‘Boost’ products as a suite of names”:

To develop a suite of naming options for Upcoming Living Network Features to be launched in FY23 including:

-    NBN Speed Boost

-    Mobile Boost

-    Call Captions

-    5G Boost

NB. There is an opportunity to consider the ‘Boost’ products as a suite of names.

95    The Marketing Brief described the “communications task” in a way which indicates it was choosing names which it considered would be “distinctive” and “ownable” and “associative”. The “communications task” was described in a way which might reasonably be understood as being to choose a name which was both descriptive and functioning as a badge of origin:

Naming should be descriptive “says what it does on the tin” to aid product comprehension and recall. However, per previous naming projects it needs to be distinctive and ownable for Optus so strike the right balance between functional and associative.

96    The Marketing Brief posed the question “What’s in it for the customer?” and answered the question in part in a way which – when read in the context of the whole of the Marketing Brief – showed that the word “Boost” was chosen for reasons beyond it being purely descriptive:

‘Boost’ products – ability to access faster network connection speeds at a touch of a button.

97    Optus knew there was an underlying issue with its plan. The Marketing Brief stated towards the end: “We can’t call the boost products ‘boost’ as this conflicts with Boost Mobile”. It is unlikely that Optus commenced its roll-out of the new features without investigating this issue closely.

98    When assessing balance of convenience and the fact that the respondent will suffer damage from the grant of an injunction, it is relevant to take into account that the steps taken by the respondent were taken with knowledge that there was a risk, that is “with its eyes open”: Beecham Group Ltd v Bristol Laboratories Pty Ltd [1968] HCA 1; 118 CLR 618 at 626.

99    As to damage Optus might suffer if the injunction is granted, if the immediate costs of the injunction are proved and it is ultimately held that the relief should not have been granted, Optus will be able to recover those costs on Boost’s undertaking as to damages. The same position applies if it is able to prove other losses, for example, arising from damage to reputation.

100    Boost submitted, by reference to Martin & Pleasance Pty Ltd v A Nelson & Co Ltd [2021] FCAFC 80 at [62]-[64] per Jagot, Yates and Jackson JJ, that the correct time to assess balance of convenience was immediately before the impugned conduct, in this case 21 February 2023 or immediately before launch of the two new features. On Boost’s argument, the matter should be assessed on the basis that Optus was proposing to launch the two features, not that it had in fact launched the two features. This would mean that a large part of the prejudice to which Optus pointed would be irrelevant in considering where the balance of convenience lies. This issue does not need to be decided, although I am inclined to think the argument is incorrect on the present facts.

101    I approach the issue on the basis most favourable to Optus, discussed above. On that basis, I am satisfied that the balance of convenience weighs in favour of Boost and therefore in favour of granting interlocutory relief.

CONCLUSION

102    Optus submitted that even if Optus is ultimately successful at any final hearing, it would not be practicable to reinstate the Impugned Terms. On this argument, the interlocutory injunction would finally determine Optus’s use of the Impugned Terms. Optus submitted that it would require a cogent case to justify relief in these circumstances.

103    In Generic Health v Otsuka Pharmaceutical Co [2013] FCAFC 17; 296 ALR 50 at [26], Emmett J stated:

Where the grant, or refusal, of the injunction sought would, in effect, dispose of the matter in favour of one of the parties, an injunction would, in a practical sense, function as final relief.  In such a case, the probability of the applicant’s ultimate success will need to be particularly high.  In a case where the grant or refusal of interlocutory injunctive relief will have the practical consequence of deciding the applicant’s claims for final relief, and thus deciding the commercial dispute between the parties, the applicant must demonstrate a relatively strong case.  That requires that an assessment be made of the strength of the case (Samsung at [35], [37], [49], [87] and [88]).

104    Bennett J at [121]-[128] and Greenwood J at [253]-[255] put the matter slightly differently, but the underlying point, as applicable to the argument put by Optus, is that there should be a careful assessment of the strength of the prima facie case and the prima facie case must be sufficiently strong to justify an injunction which has the likely practical effect of putting an end to its use of the Impugned Terms.

105    Boost disputed the underlying factual premise of Optus’s submission in this respect. In Boost’s submission, the evidence was far from clear that Optus would not use the Impugned Terms if successful after a final hearing. Boost referred in this regard to the fact that both parties agreed that they would be ready for a two day final hearing by 18 April 2023 and that Optus’s evidence was that it would take 4 to 8 weeks to implement a name change.

106    The disputed underlying factual premise is difficult to resolve, it involving a prediction as to future events, featuring a number of unknowable variables. Although I have some doubt about it, I will put that doubt aside and address the question on the basis that the grant of an interlocutory injunction will have the likely result of Optus abandoning use of the Impugned Terms, even if successful at a final hearing. I have taken this into account in assessing whether interlocutory relief should be granted and specifically in assessing the strength of the prima facie case.

107    Adopting the language in Samsung Electronics at [87], Boost’s prima facie case is “relatively strong”. By this I mean that, when assessed together with the balance of convenience, Boost’s prima facie case is sufficiently strong to warrant the grant of interlocutory relief, recognising that the grant of that relief is likely to have the effect of deciding the fate of Optus’s use of the Impugned Terms.

108    Adopting Optus’s terminology, Boost’s case is “cogent”.

109    Optus submitted that Boost’s refusal to accept Optus’s offer of an early final hearing is a discretionary factor that weighs against the grant of an injunction. On 28 February 2023, Optus’s solicitors wrote to the solicitors for Boost noting that Optus considered that it was appropriate to proceed to an early final hearing in place of the interlocutory injunction application, indicating that it could be ready for an early final hearing from 18 April 2023. The offer was repeated on 2 March 2023.

110    Boost embraced an early hearing date, and encouraged an even earlier hearing date, but did not abandon its claim for interlocutory relief. Boost’s position was reasonable in circumstances where Optus would not agree to cease using the Impugned Terms pending hearing and, as Optus’s evidence later disclosed, in fact proposed a significantly broader marketing campaign which would inevitably embed the Impugned Terms deeper into the market by the time of any final judgment.

111    I consider it appropriate to grant interlocutory relief notwithstanding the parties’ joint desire for an early hearing. This decision is informed by the strength of the prima facie case, the fact that a final hearing may or may not be achievable in the time frame suggested and the fact that it is not known what length of time might be required for judgment to be delivered. During that time, the potential confusion and the risk of damage to Boost will be exacerbated whilst Optus “expand[s] 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, brochures and retail marketing.

112    For these reasons, the preferable course is to grant interlocutory relief.

Associate:

Dated:    17 March 2023