Background

In June 2025, Choice Broadcasting Limited (‘Choice’) obtained an injunction preventing new market entrant Bauer Audio Ireland Limited (‘Bauer’) from using ‘Greatest Hits Radio’ as a brand name for its radio station on the newly launched DAB+ radio service. Choice relied on the goodwill in its Classic Hits Radio station name, its trade mark registration for CLASSIC HITS, the fragility of its audience and the risk of irreparable harm that could not be addressed by damages. On that basis, it claimed that an injunction was necessary. 

Bauer accepted the injunction on the basis of an expedited substantive trial and, in the meantime, would use the alternative name GHR. Whilst objecting to that alternative name too, Choice was not granted an injunction against it. 

Now, over a year after the injunction, we have the judgment in that substantive case and Bauer has been vindicated. 

No passing off

The Court accepted Choice had goodwill and reputation in its radio station brand name Classic Hits Radio. However, it could not lay claim to the descriptive words Hits or Radio, and nor could it lay claim to the words Classic Hits. The evidence did not show that its use had led to the descriptive words Classic Hits acquiring a secondary meaning pointing to Choice’s station. There was no misrepresentation by Bauer in using Greatest Hits Radio. Any confusion was “mere confusion” by reason of the use of descriptive terms.

The Court referred to a number of cases on this issue, including the classic English passing off case of Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd (1946) 63 RPC 39 (which held “Office Cleaning Association” did not pass off “Office Cleaning Services”). The Court concluded that, absent any misrepresentation, there was no passing off.

No trade mark infringement

This claim fell away as the Court accepted Bauer’s counterclaims finding Choice’s Irish trade mark registration for CLASSIC HITS was invalidly registered as, at the date of filing, it lacked any distinctive character and was descriptive (“the words are likely to be perceived as providing information as to the content of the broadcast and specifically that it comprises popular songs (‘hits’) from an earlier era or time (‘classics’)”). In line with the earlier findings, the Court rejected the argument that the words had since acquired a distinctive character or secondary meaning through use. 

The Court also held that the registration should be revoked for non-use, as there had been no genuine use of the mark. This was on the basis that genuine use required the mark to be used in accordance with its essential function which is to allow the goods of on one undertaking to be distinguished from those of another, and “essentially, it is not possible to make genuine use of it because it lacked any distinctive character”. 

Take home

So, no passing off and the trade mark was invalid and revoked. This case is a reminder of a risk of adopting a descriptive brand: whilst the consumer immediately knows what your offering is, even if you gain a reputation in that name, the scope of protection may be very limited, and some incidents of confusion may have to be lived with.