New Zealand Rugby (NZR) suffered a major setback when its application for an interim injunction against the Australian Rugby League Commission (ARLC) regarding the usage of the Chiefs name was turned down in court.
The governing body of the game in New Zealand headed to the country’s High Court in Wellington to prevent the incoming Papua New Guinea (PNG) NRL club from using the Chiefs name which is already associated with the Super Rugby Pacific franchise.
Last week, NZR filed an urgent application at the High Court for the interim injunction ahead of the PNG team’s planned jersey and branding launch in Port Moresby next Wednesday.
The PNG Chiefs was established in 2024 and they are scheduled to compete in the NRL from the 2028 season while the Hamilton-based Chiefs was founded in 1996 ahead of the inaugural Super 12 season.
The ARLC own both the NRL and the new PNG club and their lawyer, Clive Elliott, told the Wellington High Court on Friday that the launch would go ahead regardless of the outcome of the hearing.
Two clubs in ‘different jurisdictions’
“It’s in another country and under a different jurisdiction, the only way in which the courts in New Zealand can control it is the extent to which any information reaches New Zealand,” Elliott submitted.
“We say there is no use of the trademark in New Zealand.”
Elliott also revealed that the NRL and PNG Chiefs are willing to geo-block content on its social media platforms regarding the launch. According to Elliot, that indicates that the ARLC are “doing everything in their power to address” NZR’s concerns.
Those assurances from the ARLC resulted in the High Court’s Justice Karen Grau declining NZR’s application. The court will release the reasons for its decision next week.
While the High Court’s ruling is a setback for NZR, it does not mean it’s the end of the trademark dispute. The opposing organisations are heading for a further showdown in a full court which is set to take place early next year.
In outlining the case for an interim injunction, NZR’s lawyer Earl Gray said the PNG Chiefs’ proposed launch next week would lead to the entrenchment of the PNG Chiefs name.
“The genie will be very hard to squeeze back into that bottle,” Gray said.
“The owner [of the trademark] has freedom to use and exploit the brand as it sees fit. It is not for infringers to dictate that result. The ARLC are trying to take that exclusivity and freedom away by stealth.”
However, Elliott countered that by saying the jersey launch would not “change the status quo when it’s one step in a long process”.
New Zealand Rugby move to ‘protect’ Chiefs brand as legal action taken against ARLC
“It’s been portrayed as a milestone event that’s going to change everything,” he added. “That is not the case. Over the next three months there is limited prospect of irreparable harm to NZ Rugby.”
He also said the perceived urgency was “really an edifice” which NZR had created to “try and cover up for its own inaction”.
Gray then argued that rugby league officials had “brought the issue upon themselves”.
ARLC accused of not doing the ‘rudimentary checks’
He explained that it was apparent from the ARLC’s submissions that the organisation had not done the “rudimentary checks” to ensure the trademark was available before announcing the name of the new NRL club.
“A responsible brand owner or business person would think ‘hell we’ve got a problem here – we can’t use this’,” he said.
“But what’s clear from the defendant’s evidence is that the defendants did not bother to check that the name was available to use before adopting it.
“So, they’ve brought this issue upon themselves, and, inexplicably, now want to get away with it.”
He added that giving the PNG Chiefs permission to use the name would create significant “confusion and brand damage” and said the two codes operate in increasingly overlapping sporting markets.
To indicate how there is an overlap between the codes, Gray used a slip-up made by New Zealand’s Prime Minister Christopher Luxon as an example. Ahead of the NZ Warriors’ appearance in the NRL play-offs last month, Luxon referred to them as the Waratahs.
However, Justice Grau responded by saying: “The average New Zealand sporting fan might not do that. People interested in sport… surely they know the difference between rugby and league?”
Elliott told the court the ARLC are confident of its position.
“We have a good and arguable defence that there is no trademark infringement,” he said. “[Granting an injunction] would create uncertainty and cause reputational damage.
“I think my client deserves its day in court where this issue can be fully ventilated.”