Boost initiated proceedings against Optus for misleading and deceptive conduct, passing off, but most importantly, Trade Mark infringement in accordance with section 120(1) of the Trade Marks Act 1995 (Cth).1 Optus were promoting, selling, and advertising mobile and internet services under the names “Mobile Boost,” “Internet Boost,” “Optus Internet Boost,” “Optus Boost” and “Optus Mobile Boost”. These were classified as the impugned terms in the case. Boost’s lawyers had requested that Optus cease promoting and offering services under the impugned terms, which called for undertakings which, if they failed to provide, Boost would commence proceedings pursuing an interlocutory injunction. Optus requested more time to respond, and no undertakings were given.
The matter proceeded during which Justice Thawley applied legal principles drawn from Australian Broadcasting Corporation v O’Neill,2 highlighting that whether the Applicant has a chance of success in justifying the granting of an interlocutory injunction, and whether the inconvenience or injury the Applicant would suffer were the injunction refused would outweigh the injury the Respondent would suffer if the injunction was granted. Justice Thawley also noted that these inquiries cannot be made independently and noted that the ‘balance of convenience’ would inform whether the prejudice and hardship are likely to be suffered by either party according in respect of either outcome.3
In this matter, evidence was given as to the logistical difficulties, inconveniences, and financial losses Optus would suffer if the injunction was granted. These included making changes to the My Optus App and the Living Network to remove all references to the impugned terms, cancellation of pre-booked advertising, determining new names for features or tools referencing the impugned terms, revising all marketing and promotional material and scripts for television commercials. While these provide an indication of inconvenience suffered, Justice Thawley outlined that in assessing the balance of convenience, it must be considered whether the Respondent had taken steps to acknowledge any potential risk ‘with its eyes open.’4 It was highlighted that Optus were aware of the underlying issue using the impugned terms before incorporating same in their promotional activities their new features given that it was stated at the end of a Marketing Brief that their products would conflict with Boost Mobile. Therefore, Justice Thawley found in favour of Boost.5
While Boost’s case was prima facie strong, the judgement demonstrates the empirical value in using a ‘balance of convenience’ in the assessment of granting interlocutory relief or refusing it.
1 Trade Marks Act 1995 (Cth) s 120(1).
2 Australian Broadcasting Corporation v O’Neill  HCA 46; 227 CLR, 65.
3 Samsung Electronics Co v Apple Inc  217 FCR 238, 61.
4 Beecham Group Ltd v Bristol Laboratories Pty Ltd  118 CLR 618, 626.
5 Boost Tel Pty Ltd v Singtel Optus Pty Ltd  FCA 213, .