Choice Broadcasting Ltd v Bauer Audio Ireland Ltd (Approved)

Factual and Procedural Background

The Plaintiff commenced plenary proceedings on 20 June 2025, alleging that the Defendant’s proposed use of “Greatest Hits Radio” infringed the Plaintiff’s “Classic Hits” trade mark and amounted to passing off. The Plaintiff sought declarations, injunctive relief, damages, an account of profits and related relief. [1][2][3][4][5][6][7][8][9][10][11][12][13][14]

The Plaintiff operated a radio station directed principally at listeners aged 45 and over and used the names “Classic Hits Radio” and “Ireland’s Classic Hits Radio”. The Plaintiff claimed goodwill and reputation in those names and alleged that the Defendant’s proposed Irish DAB+ service would cause confusion among listeners and advertisers. [15][16][17][18][19][20][21][22][23][24][25][26][27][28][29][30][31][32]

The Defendant denied similarity, goodwill, reputation, confusion and passing off. It counterclaimed that the “Classic Hits” trade mark was invalid because it was descriptive and lacked distinctive character, and sought revocation for non-use. [33][34][35][36][37][38][39][40][41][42][43][44][45][46][47][48][49][50][51][52]

The Defendant began broadcasting on the DAB+ trial using “Greatest Hits Radio” on 16 June 2025. An interim injunction was obtained on 20 June 2025, after which the Defendant used “GHR”. A later application concerning “GHR” was rejected because it was outside the interim injunction and the Plaintiff had not established a fair issue to be tried. [53][54][55][56][57][58][59][60][61][62][63]

Legal Issues Presented

1. Whether the Defendant’s use or proposed use of “Greatest Hits Radio” constituted passing off by misrepresentation likely to cause confusion and damage. [64][65][66][67][68][69][70]
2. Whether the Plaintiff had established goodwill or reputation in the relevant names and whether “Classic Hits” had acquired secondary meaning or distinctive character. [71][72][73][74][75]
3. Whether the “Classic Hits” trade mark was invalid under sections 8(1)(b) and 8(1)(c) of the Trade Marks Act 1996. [76][77][78][79][80]
4. Whether the trade mark should be revoked for failure to demonstrate genuine use under section 51 of the Act. [81][82][83][84][85][86][87][88]

Arguments of the Parties

Plaintiff’s Arguments

• The Plaintiff argued that it had established reputation and goodwill, that “Classic Hits” was the crucial part of its brand, and that “Greatest Hits Radio” was confusingly similar. [89][90][91][92][93][94][95]
• It relied on similarities in the names, slogans, target demographic, playlists and the possible effect on JNLR survey results and advertising revenue. [96][97][98][99][100][101][102][103][104][105][106][107][108][109][110][111]
• It relied on survey evidence, including a finding that 67% of respondents considered the names likely to be confused, and argued that actual confusion was unnecessary. [112][113][114][115][116]
• It argued that the trade mark had acquired distinctive character before the invalidity challenge and that its use and recognition in the industry supported continued validity. [117][118][119][120][121][122][123][124][125][126][127][128]

Defendant’s Arguments

• The Defendant argued that “Classic Hits” and “Greatest Hits” were descriptive terms which had to remain available for use by competitors, and that resulting confusion was merely “mere confusion”, not actionable misrepresentation. [129][130][131][132][133][134][135][136][137][138][139]
• It disputed the alleged goodwill in the words “Classic Hits”, relying on the Plaintiff’s use of changing station names and the absence of established secondary meaning. [140][141][142][143][144][145][146][147][148][149][150]
• It argued that its name and slogan were established elements of its existing United Kingdom brand and were not selected to appropriate the Plaintiff’s goodwill. [151][152][153][154][155][156][157][158][159][160][161]
• It challenged the Plaintiff’s survey and AI-generated search evidence and argued that the Defendant could not be liable for material generated by third parties. [162][163][164][165][166][167][168][169][170][171][172][173][174][175][176]
• It argued that the trade mark was descriptive, lacked distinctive character, had not acquired distinctiveness through use, and had not been put to genuine use in relation to the registered services. [76][177][77][178][78][179][180][181][182][183][184][185][186][187][188][189][190][191][192][193][194][195]

Table of Precedents Cited

Court's Reasoning and Analysis

The Court accepted that the Plaintiff’s radio station had goodwill and reputation under “Classic Hits Radio” and “Ireland’s Classic Hits Radio”. However, it distinguished goodwill in the station from goodwill or secondary meaning in the words “Classic Hits” themselves. Those words were descriptive of a radio format and had not acquired distinctive character. [72][73][74][75]

The Court considered that “Classic” and “Greatest” were materially different in appearance, sound and meaning. Although the names might generate some confusion, that was “mere confusion” caused by the use of descriptive terms. Such confusion did not establish that the Defendant represented its service as connected with the Plaintiff. [346][347][348][96][349][350][351][352]

The similarities in the stations’ music, audience and slogans were insufficient. Competitors were entitled to play similar music to a similar audience, and the evidence did not establish intentional or unintentional misrepresentation. The Defendant’s use of the name and slogan reflected an existing brand architecture rather than an attempt to appropriate the Plaintiff’s goodwill. [97][353][99][354][355][356][357][157][159][358][160][161]

The Court gave limited weight to the AI-generated search results because of their known unreliability. It treated the Plaintiff’s survey as evidence of some value, but concluded that its results demonstrated only likely mere confusion, not confusion caused by deception or misrepresentation. [163][164][165][166][167][168][176][115][116][359][220][221][360][361][362][363]

The Court accepted that “Greatest Hits Radio” might ultimately appear in JNLR surveys and that confusion might occur among listeners or advertisers. Nevertheless, any such confusion remained the foreseeable consequence of using descriptive terms and did not constitute actionable passing off. [364][365][366]

On the trade mark counterclaim, the Court held that “Classic Hits” was descriptive and devoid of distinctive character under section 8(1)(b). It also consisted exclusively of signs capable of designating the kind, quality or intended purpose of radio services under section 8(1)(c). [78][79][80]

The Court rejected the argument that use had created acquired distinctiveness. The Plaintiff’s use of “Classic Hits” was generally as an abbreviation of longer station names, and the evidence showed that the phrase did not function independently as a badge of origin. [367][368][369][370][371][331][332][372][373][374][375]

The Court also found that the Plaintiff had not proved genuine use of the trade mark for the registered services. The evidence did not address the relevant independent service subcategories and did not demonstrate genuine market use satisfying the essential function of a trade mark. [82][326][83][330][333][84][85][327][86][87][376]

Holding and Implications

The passing-off claim failed. The Plaintiff did not prove misrepresentation leading, or likely to lead, to actionable confusion. [88][377][378]

The “Classic Hits” trade mark was declared invalid under section 52(1) because it had been registered contrary to sections 8(1)(b) and 8(1)(c). [379][380][377][378]

The trade mark was separately revoked for non-use under section 51. [88][377][378]

The matter was listed for costs, finalisation of the order and any remaining issues. The decision’s direct effect was that the Plaintiff obtained no passing-off relief and lost the challenged trade mark protection. [377][378]