Kiss off ARN...
says Melbourne dance music narrowcaster Kiss.
The station has launched a campaign to raise funds for a legal fight to challenge the Australian Radio Network for trade mark breaches and 'passing off' a name that it has used for the past eight years.
As predicted by radioinfo in our first report about KIIS, ARN had some hurdles to jump about trade marks. radioinfo understands that ARN was notified about the potential trade mark infringement by Kiss station manager Tim Byrne on 27 November and ignored the station's initial approach.
Byrne has told radioinfo: “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." He says they are acting like bullies.
Perhaps eyeing a cash windfall out of its legal action, the little suburban Melbourne narrowcaster is taking on the national commercial network.
Whether its trade mark, which is only based in one state and which was officially registered only days before ARN registered KIIS, will stand up against a high powered station, based in Sydney and not heard in suburban Melbourne, remains to be seen.
Kiss FM obviously believes it does have a case, and so do its lawyers. Studio Legal has today sent a letter to ARN saying:
"Through various Australian media reports, including in The Australian, Radioinfo.com.au... our clients’ are led to believe that your company has already begun rebranding its MIX FM radio stations throughout Australia in line with the KIIS / KISS Rebrand...
Should your company continue with the KIIS / KISS Rebrand, our clients hereby put you on notice that you will be infringing its various intellectual property rights in the KISS Brand.
"The words KISS or KISS FM and the words KIIS or KIIS FM (despite their different spelling to our clients’ KISS Trade Marks) are substantially identical or deceptively similar to our clients’ well-established KISS Trade Marks. Any variation that includes the FM station band, such as “101.1” will not negate this fact, given that the consumers’ imperfect recollection will be in respect of the dominant phonetic reading of the word “KISS”. Further, given the varying FM bands throughout Australia, the most prominent part of the trade mark is the word KISS and its phonetic reading.
"Should you continue with the rebrand of your company’s radio station to the KIIS / KISS Rebrand, we hereby put you on notice that your company will be infringing our clients’ common law trade mark rights in the words KISS and KISS FM and upon registration of the Kiss Trade Marks, our clients’ registered rights in the Kiss Trade Marks.
"Should your company’s conduct infringe our clients’ common law and/or registered rights in the KISS Trade Marks, our clients hereby put you on notice that it will be forced to issue legal proceedings against you and/or your company in order to protect their rights."
The letter alleges that ARN has conducted "misleading and deceptive conduct" and "passing off."
The station asserts that clients who might see the KIIS name could confuse it with the narrowcaster's Kiss brand and be misled into thinking "your business and our clients’ KISS Business and Goods or Services are in some way associated with, or connected to one another or are one and the same, which they are not; [or] your business has been licensed by our clients’ to use the word “KIIS”, “KISS”, “KIIS FM” or “KISS FM”, which it has not."
The legal letter says Kiss has a "substantial and widespread reputation and goodwill in the KISS Brand throughout Australia in connection with its Goods and Services and that ARN's proposed use of the KIIS word variations "could also constitute the tort of passing off as people who would view the KIIS / KISS Rebrand would be confused or could be confused into thinking that your goods and/or services, are in some way associated with or connected to the KISS Business or its Goods and Services."
The legal letter says:
In light of all of the above, our clients now demand the following:
- That you immediately cease and forever desist from using the words “KIIS”, “KISS”, “KIIS FM” or “KISS FM” (as well as any of those words in conjunction with a station bandwidth), in relation to radio broadcasting and entertainment services, festival entertainment services, event organisation services, promotions and advertising services, online blogs, merchandise goods and online magazines and newsletters, or the sale of any related goods or provision of any related services; and
- That you relinquish ownership of and cease use of the KIIS / KISS Domains within 14 days of the date of this letter.
Our clients demand that you confirm to our firm in writing by no later than 6pm EST on Friday 6 December 2013 that your company has complied with the above demands.
On its website, Kiss is asking its supporters to sign a petition and contribute money to fund the legal fight.