Following an Interlocutory hearing at the Federal Court in Sydney over the past two days, Justice Thawley has ruled the Optus must cease to use the “Boost” name in it’s products and marketing until a full hearing into the trademark dispute between Boost Mobile and Optus can be heard.
In what seemed an open and shut case to those of us on the outside, in fact one I raised at the moment the “Mobile Boost” product was announced by Optus, in the world of Law it’s a whole lot more complex.
While Optus sought to label Boost Mobile as a “prepaid” Telco, thus their Postpaid “Mobile Boost” product was not the same or competitive, examples of other trademark infringements were presented to Justice Thawley who in turn ruled in Boost’s favour by deeming that Optus must cease to use the term Boost within its product naming as currently is happening.
With no less than a dozen representatives from law firms between them, Optus and Boost took to a Federal Court hearing with Boost seeking to stop Optus from using the Boost name until a full Trademark infringement case can be heard.
Lawyers for Boost Mobile argued that Optus could not use the word Boost in several ways, “Optus Boost”, “Optus Mobile Boost”, “Mobile Boost”, references to the “Mobile Boost product”, or “Boost” on it’s own.
They did agree that use of the word boost (without capitalisation) in normal grammar was not in contention. The presiding judge Justice Thawley referred to the above screenshot himself several times.
Interestingly, It’s unlikely you’ll ever hear the name Mobile Boost again, and frankly, in my personal view – it’s unlikely Boost and Optus will even go to court over the name, as Optus conceded within their submission that if they are to change or remove the name now, it’s unlikely they would then go back to it even after success in a trial over this.
Critical to the decision appears to be what is referred to as Exhibit 1 from the Interlocutory hearing, a marketing document from Optus that is deemed confidential so we’ll never get to see it – but it’s a damning document in which discussions about the product and possible names were put forward. This document dates back to may 2022, and in his judgement His Honour referred to an area in the document in which the Boost Trademark was raised as a point of interest.
That Optus went ahead with the name raises serious questions about the processes within Optus for it to get this far.
Legal costs alone here will be hundreds of thousands of dollars, all for something Optus could have simply found a different name for.
Justice Thawley said “Boosts prima facie case is relatively strong”, this is the first most important part of his decision, to state that their case should it be taken to court would be strong over Optus, in fact he said it’s “Sufficiently strong to grant interlocutory relief”.
Just how long Optus has to remove all the Mobile Boost branding from their app and website is still to be determined.
Rest assured though, Boost Mobile founder Peter Adderton was following along while in the United States, and he would have yelled one thing loudly no matter what the time difference – YES!