Australia: Trademark Infringement - Use of Building names in Advertising and Marketing

When referring to a building name in advertising and marketing, for example on a website to promote accommodation services, you may be liable for trade mark infringement if you have not sought the brand owner's consent.

The recent decision of the Federal Court of Australia in Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) demonstrates the circumstances in which a domain name registration incorporating a registered trade mark can constitute trade mark infringement.

The case also emphasises the importance for:

• building developers and managers to seek trade mark registration for their building names; and
• promoters who use the names of buildings to advertise their services to seek consent from the brand owners, to avoid infringing any registered trade marks.

The Facts

Mantra Group Pty Ltd (Mantra) is the property manager of a high-rise apartment complex on the Gold Coast called 'Circle on Cavill' and is the exclusive onsite letting agent for 261 of the apartments in the complex.

Mantra is the registered owner of three trade marks in Australia that include the words 'Circle on Cavill'. The trade marks are registered in respect of management services including property management, realty administration, leasing and temporary rental accommodation.

Tailly Pty Ltd (Tailly), one of the offsite letting agents for Circle on Cavill holds a number of apartments which it leases to holiday makers on a short term basis.

To advertise its apartments and source bookings Tailly:

• became the licensed owner of several domain names incorporating the words, variations or misspellings of the words Circle on Cavill;
• used the name Circle on Cavill in the banner, text and title of the websites; and
• used the name Circle on Cavill in the meta-tags of its websites. By using the name in the meta-tags of the websites, Tailly was able to achieve a higher ranking for its websites in the search engine results.

Mantra commenced proceedings against Tailly for infringement of its registered trade marks and misleading and deceptive conduct under the Trade Practices Act 1974.

Tailly's Defences

Tailly sought to rely on two defences under the Trade Marks Act 1995 (Cth) namely:

• the Geographic Origin defence whereby Tailly argued that it had used the name Circle on Cavill to describe the location and name of the complex; and
• the Good Faith defence.

Tailly was unable to establish either of these defences. His Honour, Justice Reeves found that the word "geographical" referred to a broader concept of place such as country, state, region, city, town or suburb and did not include a privately owned residential complex.

It was also established that Tailly had deliberately used the name to gain a commercial advantage for its letting business. The domain names that Tailly used were set up with the intention of directing traffic to its sites rather than to Mantra's website.

Mantra's Counter Claim

Tailly sought to have Mantra's trade mark registrations cancelled on the basis that the name Circle on Cavill had become generally accepted within the market as the name of the apartment complex and argued that Mantra had lost its exclusive right to use the word as a trade mark. The Court disagreed with this argument and the trade marks remained on the Trade Marks Register.

The Decision

The primary issue was whether Tailly had used the words Circle on Cavill or similar words as a trade mark.

Mere registration of a domain name that incorporates a trade mark does not necessarily equate to use as a trade mark under the Trade Marks Act 1995 (Cth). However if, the domain name is associated with a website that contains marketing material that promotes goods or services in relation to which a trade mark is registered, this may constitute use as trade mark.

In assessing whether use of a mark is use as a trade mark, the Court will examine numerous factors including the positioning of the words, the colours and the type and size of the font used.

The Court required Tailly to transfer its infringing domain names to Mantra and to refrain from using the name Circle on Cavill as a trade mark to advertise accommodation. Tailly had to pay its profits to Mantra for bookings sourced via the infringing websites.

Lessons

• Register your trade marks as they are the most important tool you can have to protect your brand from unauthorised use.
• Property developers and managers should register their trade marks as soon as they decide on the name of a complex or building and prior to selling any apartments. The Court will enforce trade marks for letting businesses even when the trade mark is the name of the building.
• To avoid liability, it is important to investigate whether the name of a building is a registered trade mark before advertising it and using it on websites.
• Appropriate steps should be taken to get authorisation to use trademarked names when promoting your goods or services.

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The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.