Boost wants Optus to run ads admitting alleged trademark infringement, according to court documents

Court documents have revealed that Boost Mobile wants Optus to run ads regarding the latter’s alleged copyright infringement on its use of the word ‘BOOST’ in a recent marketing campaign.

Boost Mobile filed the intellectual property dispute with the Federal Court on February 24. The telco has taken issue with Optus offering Internet Boost and Mobile Boost products that allow its customers to ‘boost’ their NBN and mobile speeds for short periods of time.

The Federal Court has expedited the hearing into the case, which will begin on March 13.

In court documents seen by SmartCompany, Boost Mobile is alleging copyright infringement over Optus’ use of ‘BOOST’ in its marketing materials

This includes:

“BOOST, MOBILE BOOST, INTERNET BOOST, OPTUS BOOST, OPTUS INTERNET BOOST, OPTUS MOBILE BOOST and OPTUS MOBILE BOOST BETA AND MOBILE BOOST BETA (Impugned Marks).”

According to the documents, this constitutes as a “trade mark in respect of the Respondent’s mobile phone and internet services”.

The documents go on to allege that customers would “perceive those product names as brands specifically referring to those services provided by the Respondent”.

Boost Mobile is claiming this is “misleading and deceptive” conduct that implies that Optus BOOST products are “provided, operated or endorsed” by Boost Mobile, that it’s a brand extension or connection between the two companies and that Optus “provides its telecommunications services via the Respondent’s mobile network, rather than Telstra’s mobile network”.

What Boost Mobile wants from Optus

According to court documents, Boost Mobile is claiming that Optus’ BOOST products have resulted in damage to Boost’s reputation, a loss in sales, and have affected the ability of customers to “identify or distinguish the goods and services of the Applicant”.

As such, Boost Mobile is seeking a few things from the Federal Court.

If its case is successful, Boost is seeking damages and costs, as well as a permanent injunction that would prevent Optus from selling internet or mobile services with the names Boost, Internet Boost, Mobile Boost, Optus Boost, Optus Internet Boost or Optus Mobile Boost.

It is also asking for a corrective notice to be published on the Optus website for 30 days. These are all relatively ordinary requests in these sorts of cases.

What’s a little more unusual is a request for Optus to create “advertisements in such terms and in such media as the Court sees fit to inform members of the public that the Respondent’s conduct infringed the Applicant’s trade mark registration… was misleading and deceptive and amounted to passing off”.

But perhaps this is less surprising when we consider how publicly vocal Boost Mobile has been about the case.

“Just when I didn’t think Optus could embarrass themselves any further, they once again surprise us all,” Boost Mobile founder Peter Adderton said on the same day the company filed in the Federal Court.

“Optus launched products under the BOOST brand which Boost Mobile considers must be a deliberate attempt to trade off our valuable BOOST brand and success.”

Adderton spoke out again last week when it was announced that the case would be expedited.

“We want Optus to stop using our trademarks which include the words Boost and Boost Mobile. As an Australian business we will always fight for what is right and look forward to the hearing where this will be discussed in greater detail in front of the court,” Adderton said in a statement.

“All Optus needs to do is show some level of creativity and come up with other product names for their offerings. I would be happy to meet with the Optus marketing team and give them some suggested alternatives if they are struggling with new ideas.”

In contrast, Optus has remained relatively tight-lipped about the alleged infringement. The telco did originally state that customers were unlikely to confuse Boost and Optus, but it is now keeping quiet, stating that litigation has commenced.

Why is Boost only going after Optus?

There has been some discussion around why Boost is taking Optus to court when the likes of Boost Juice and Cadbury Boost products are also sold in Australia.

The obvious answer is that these two brand and products operate well outside of the telecommunications space. There’s no danger of a consumer mistaking a Mango Magic juice for a mobile plan.

But there are other telco operators in Australia that also have products containing the name Boost. Exetel offers a ‘My Speed Boost‘ product that lets customers temporarily boost their NBN speeds. So does Superloop (which acquired Exetel in 2021) with its Speed Boost offering.

These are the same concepts as what Optus is now advertising. Why is Boost Mobile not concerned about them?

We don’t have a definitive answer on this. But it probably comes down to numbers. Boost doesn’t drop its figures that often, but we do have a few clues.

In May 2022 the telco announced in a media release that it had doubled its pre-paid market share. According to the company it had “more than 700,000 Australians now relying on Boost Mobile, it represents very significant growth for Boost Mobile, as it targets more than 10% of the prepaid market in the short term and finalises plans to expand into new areas of the market”.

And just last month, Peter Adderton said that Boost’s pre-paid numbers outpaced Vodafone.

“Vodafone Australia released it’s prepaid numbers today once again @BoostAus out grew [sic] them, we couldn’t do it without the support of a great network partner and the best customers in Australia…thank you,” Adderton said on Twitter.

Vodafone Australia released it's prepaid numbers today once again @BoostAus out grew them, we couldn't do it without the support of a great network partner and the best customers in Australia…thank you .

— Peter Adderton (@peter_adderton) February 27, 2023

When Superloop acquired Exetel in 2021, its announcement revealed that the latter had around 110,000 customers across Australia.

When Superloop released its financial results in the same year, it stated that consumer subscriptions had grown 62% to 47,000 — and that this figure was separate to the customers it acquired from Exetel.

While these figures are now a couple of years old, it still provides a snapshot into the difference in customer numbers between Exetel’s portfolio and those stated by Boost.

Perhaps Boost Mobile considers itself to be more of an equal with the big three Australian telcos. And maybe that’s why it has chosen to litigate against Optus’ ‘Boost’ products, and not gone down a similar road with smaller telcos that have done the same thing.

SmartCompany has contacted Boost Mobile and Optus for comment.