Community network Kiss FM takes on radio heavyweight ARN in legal dispute

A name dispute has emerged between two Australian radio networks, as Kiss FM prepares to take legal action against Australian Radio Network.

On January 20, 2014, ARN is scheduled to rebrand its Mix radio station in Sydney to KIIS, to be headlined by the Kyle and Jackie O Show.

This name change has spurred the ire of Victorian community radio station Kiss FM, which has been operating under the name since 2005.

In what the network has labelled a “David and Goliath” type battle, Kiss FM is appealing for funds to help it launch legal action against ARN.

In a statement on the Kiss FM’s Facebook page, the radio station said if ARN successfully launch the KIIS brand, it will damage the “goodwill and reputation” of Kiss FM.

“Unperturbed by the fact Kiss FM Dance Music Australia has carved out a national and international reputation as Australia’s premier dance music radio station, ARN has chosen to ignore Kiss FM’s common law rights and pending trade mark application (which we have clearly notified them of) forcing us to engage in a legal fight to protect our brand,” it says.

“In a David and Goliath battle or scenario akin to ‘the vibe’ in the iconic Australian film The Castle, Kiss FM Dance Music Australia is being forced to defend its rights to exclusively use on an unrestricted basis its Kiss FM name in Australia.”

ARN, under a subsidiary, has also currently filed seven trademark applications for KIIS FM.

Hall and Wilcox partner Ben Hamilton told SmartCompany this is a lesson to business owners to obtain a trademark as soon as your business launches.

“Where there is often a dispute, it arises when there is a party which launched first but hasn’t taken out trademark protection,” he says.

“It’s a pretty fundamental issue. If you launch a brand, taking out trademark protection as soon as possible can help… otherwise when a competitor pops up you have to rely on common law rights.”

Hamilton says it’s often an issue for start-ups, as filing for a trademark can fall by the wayside.

“There are so many competing priorities when setting up a business and protecting trademarks is just one of many issues faced by a start-up when starting a business,” he says.

“Court cases are costly and ultimately a business needs to consider whether or not the cost is worth it.”

As neither company currently has an approved trademark, should Kiss FM want to challenge ARN, it will have to do so under a common law defence.

“Without a registered trademark you rely on common law rights. What this means is you’re relying on establishing that the other party is engaging in misleading and deceptive conduct or passing off,” Hamilton says.

“Misleading conduct has stolen the spotlight recently… and as the name suggests you have to establish that consumers are being misled. Whereas with a trademark infringement you look at what you have and whether or not the competition is using a similar trademark.”

Hamilton says under consumer law, Kiss FM would need to show that radio listeners were confused or thought the two stations were associated.

“You need a reputation first and foremost. Consumers need to be aware that you’re around. They’d look at the extent of a business’s reputation – if it’s national, in a niche, or just cities, it’s a very factually based claim,” he says.

“Having established reputation, you then need to establish if a reasonable consumer would be confused. You look at where the competing market is being accessed or seen by consumers and the court would make an assessment as to whether or not a consumer would be confused into thinking the companies were the same or associated.”

ARN spokesperson Bec Brown told SmartCompany KIIS 1065 is being built specifically for Sydney.

“As a Sydney brand, with a completely different music format and audience to Kiss FM’s Melbourne dance station, ARN are clearly not looking to compete with this community station,” she says.

“We’ve been in discussions with Kiss FM on all of this and those discussions are continuing.”