A BOOST for trade mark rights

Optus, Australia's second-largest telecommunications and internet provider, was recently ordered by the Federal Court to cease all use of Boost Mobile's' BOOST' brand. Optus had launched a new feature that allowed customers to get priority access to its network and higher internet speeds for only a few extra dollars. The feature was branded and used as "BOOST," "MOBILE BOOST," "INTERNET BOOST," "OPTUS BOOST," or "MOBILE BOOST." BOOST' is currently a registered trade mark and is owned by Boost Mobile. A registered trade mark provides an owner (i.e. Boost Mobile) with an exclusive right to use the trade mark and to take legal action against others (in this case Optus) who use the same or similar mark without permission.   You may be wondering how Boost Mobile obtained rights to the word "BOOST" in the telecommunications and internet space. In these proceedings, Optus had not disputed whether' BOOST' should be registered. (i.e., whether it had lost its distinctiveness as a trade mark, as it is commonly used within the industry and possibly describes the characteristics of telecommunication and products). In his judgment, Justice Thawley accepted that the word' BOOST' is descriptive and that the words "mobile" and "internet" are ordinary words. However, he recognised that a mark may have a descriptive element but still serve as a badge of trade origin." The concept of a "badge of origin" refers to the function of a trade mark to distinguish or indicate the origin of goods or . Justice Thawley was satisfied that Optus had used' BOOST' as a mark to indicate a connection between the feature offered and Optus, which distinguished Optus's from provided by others. He believed that there would be confusion in the Australian marketplace by Optus launching and using its BOOST feature and the fact that Optus has added its name to' BOOST' would "not protect against the claim." As a result, Optus was ordered to remove all references to BOOST from all its branding and advertising. Optus estimated that the impact of this ruling would be in excess of $3.5 million but this would exclude reputational damage which would be difficult to quantify.   The importance of trade mark protection is highlighted in this case. Boost Mobile could only enforce its rights as it had a registered trade mark for its brand.