The Snake Man® loses punt on Sportsbet

Raymond Hoser (The Snake Man®) is a self-professed reptile expert. He is a prolific author, and runs snake demonstrations across Australia. Mr Hoser is the proud owner of many registered trade marks, including “Snake Man” and “Snakebusters”.

In Hoser v Sportsbet Pty Ltd1, the “Snake Man®” sued online betting juggernaut “Sportsbet” for trade mark infringement.

The Facts

Sportsbet, known for its comical (and abrasive) advertising, developed a television commercial featuring an actor dressed in “traditional” snake charmer garb. The actor serenades an obliging snake, before being (rudely) interrupted by a voiceover shouting “OI, SNAKE MAN!”

Rattled, the charmer loses control of the snake, which slithers away off camera.

Mr Hoser claimed that Sportsbet’s use of the word “snake man” in its commercial was “very likely to cause confusion and mislead the public to think that there is a connection between [Sportsbet] and himself[.]”2

In response, Sportsbet argued that use of the word “snake man” by the narrator was not use as a trade mark. Rather, “snake man” was used as part of the commercial’s narrative, and to describe the central character.

Use as a trade mark

In his consideration, Robertson J of the Federal Court of Australia acknowledged that use “as a trade mark is use of the mark as a badge of origin”.3 Sportsbet’s use of the “ordinary English words…“snake man” did not indicate a connection in the course of trade between [Sportsbet] and [Mr Hoser]”.4 Therefore, Sportsbet’s use of “snake man” was not use as a trade mark.

His Honour’s determination was based on the following:

  • the words “snake man” have no connection to the betting services provided by Sportsbet;
  • Sportsbet’s own branding and trade marks are displayed prominently throughout the second half of the commercial (well after the words “snake man” are used); and
  • the words “snake man” are used for the purpose of narrative structure, and are merely introductory to the premise of the commercial.

Accordingly, “the Snake Man®” was unsuccessful, and was ordered to pay Sportsbet’s costs.

Lavan comment

Although the fate of the “Snake Man®” is hardly surprising, the case is a valuable lesson in devising distinctive and memorable brands. “Snake Man®” is largely descriptive of Mr Hoser’s goods and services. It follows that his trade mark will find use by other trader’s, and that such use is unlikely to be use as a trade mark.

If you are looking to develop a brand, it is important that you first check with a trade mark professional whether the brand:

  • is capable of registration; and
  • does not infringe on a third party’s trade mark.

Even where a brand is capable of registration, it does not mean that registration will provide adequate protection (as was the case for the “Snake Man®”).

Further, if you are considering commencing proceedings against a third party for trade mark infringement, you must understand whether that third party’s use meets the “badge of origin” test. Failure to do so can result in failed litigation, and a painful costs order.

If you require assistance in this regard, do not hesitate to contact Iain Freeman or Andrew Sutton.

AUTHOR
Iain Freeman
Partner
SERVICES
Intellectual Property and Technology


FOOTNOTES

[1] Hoser v Sportsbet Pty Ltd [2018] FCA 1557.

[2] Hoser v Sportsbet Pty Ltd [2018] FCA 1557, [17].

[3] Hoser v Sportsbet Pty Ltd [2018] FCA 1557, [17]; see also E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; 241 CLR 144, [43].

[4] Hoser v Sportsbet Pty Ltd [2018] FCA 1557, [57].