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.
I certify that the preceding seventy (70) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Charlesworth.