Optus has admitted it was aware of a potential conflict when using the term "boost" for its new services in the lead up to facing legal action and has been ordered to stop using the term in the meantime.
In February, Boost Mobile threatened Optus with potential legal action over the release of the latter telco’s new services of “Mobile Boost” and “Internet Boost”.
Boost Mobile founder Peter Adderton said that it had not authorised Optus to use the term "Boost" in its product branding. Optus was also sent legal correspondence to stop using ‘Boost’ by 5pm on 24 February “or otherwise legal proceedings will commence for trademark infringement”.
Those legal proceedings took form on 14 March, with Justice Thawley granting an application for urgent interlocutory injunction in the Federal Court over the trademark – essentially, to temporarily stop Optus from using “Boost” in its services until the actual trademark infringement case is concluded.
When mentioning submitted evidence, the judge referred to a marketing brief, which was dated 20 May 2022. Thawley said the brief ended with “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,” the judge said.
Despite this, the services did still launch with the Boost name and the telco in fact had planned to increase promotion of them in March.
During the ruling, Thawley said that in his view, there would be a risk of consumers being confused, thinking that there would be a connection between Optus and Boost, with the latter operating on Telstra’s network.
This is despite Optus submitting that the risk of Optus consumers thinking they would be receiving Boost services “is non-existent or at best vanishingly small”.
The decision to proceed with the injunction is likely to impact Optus’ bottom line in removing the branding, but the actual figure is difficult to determine.
“[Optus head of Living Network Nicholas 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,” Thawley said.
However, if the injunction wasn’t granted, then Boost would likely be affected, with the judge claiming that “Boost's current customers could be mistaken that they no longer have access to the Telstra network leading to significant customer dissatisfaction”.