The recent decision by Bromberg J in REA Group Ltd v Real Estate 1 Ltd  FCA 559 has provided yet another salutary warning against the use of descriptive trade marks - especially where the trade mark doubles up as a domain name.
The fact that REA's success was so tightly awarded due to REA's right to enforce REA's registered trade mark sends a clear signal that any commercial advantage of a descriptive name carries a hefty price - not only in terms of the mass advertising required to establish the distinctive association, but also in the vulnerability that hangs over enforcing exclusive use.
REA Group Ltd v Real Estate 1 Ltd  FCA 559 (link http://www.austlii.edu.au/au/cases/cth/FCA/2013/559.html) involved a dispute between two operators of property portals - internet websites that list property for sale or lease on the market.
The applicant, REA, operated two well known property portals: 'realestate.com.au' and 'realcommercial.com.au'. The respondent operated 'realestate1.com.au' and 'commercial1.com.au' which were described in the judgment as the "relatively insignificant" competitor portals.
REA argued that the use of "realesate1.com.au" and "commercial1.com.au" by the respondent was:
- In contravention of Section 52 of the Trade Practices Act 1974 (Cth) (TPA) because it was likely to mislead or deceive consumers searching for property on the internet.
- In contravention of Section 120 of the Trade Marks Act 1995 (Cth) (TMA) because it infringed on REA's registered trademarks: "realesate.com.au" and "realcommercial.com.au"
Although there were many different issues relating to the above claims, of particular importance and peculiarity to these domain names was the fact that the words "real estate" and ".com.au" were descriptive in character. "Real Estate" is comprised of ordinary words of the English language and ".com.au" which when decoded from IT jargon simply designates a commercial entity in a domain name country-coded to Australia.
The Court did not consider the addition of "com.au" capable of making the name "realestate1.com.au" distinctive [at 126]. As such, the domain name will not on its own suggest to an internet searcher with no prior knowledge an association with the business of REA.
Bromberg J went on to say:
Indeed, the success of REA's claim hinged on whether it could establish that its names had acquired a secondary meaning so as to become distinctive of its business. Only then could it be said that consumers may have been led to mistakenly believe that "realestate1.com.au" was a reference to the business of "realesate.com.au." To overcome this, REA led evidence to show extensive promotion of its brand through various advertising mediums which had made it well recognised.
In response Bromberg J said:
Interestingly, the counterpart "realcommercial.com.au" was held to be more adapted to distinguish. It was on the question of causation and the degree of differentiation that was required to avoid deception that REA's claim began to stumble. This seemingly subtle variation of the distinctiveness point above, turned out crucial in its own right. The point essentially arises in a situation of a competitor relying on a minute difference in name as a defence to misleading and deception. Bromberg quoted Stephen J's judgment in Hornsby Building Information Centre v Sydney Building Information Centre where His Honour identified that although a descriptive name holds commercial advantage the price to be paid is that minor alterations to this name by a competitor can be sufficient defence against claims of passing off and misleading and deceptive conduct. Thus, in Hornsby it was held that any deception that arose was not from the competitor's conduct, but the lack of distinctiveness in the trading name itself. The case of Hornsby remains strong authority given its endorsement by the High Court in Campomar Sociedad Limitada v Nike International Ltd  HCA 12.
In considering the difference that the "1" made between the competing domain names, Bromberg J held that consumers were sufficiently discerning not to be misled into thinking that the numeral "1" signalled an affiliation to REA's business. His Honour did accept though that many consumers might fail to notice the "1" and enter the portal they were not seeking to enter, yet in light of the Hornsby decision this would not be attributed to any improper conduct of the respondent.
Having failed to establish its Trade Practices Act claim, REA needed to rely on the fact that it had registered its domain names as trade marks. REA did succeed in enforcing its trade mark rights.
Bromberg J observed that registration of such descriptive trade marks created an unfair monopoly over these standard terms of trade of the property market.
A creative approach to arts fundraising
The Arts community is abuzz with the announcement that Australia's first federally supported matched funding program for the Arts and Creative industries, 'Plus1', has been launched.
Creative Partnerships is at the cutting edge for funding of the arts in Australia and seeks to stimulate partnerships between various sectors in society; including big and small business, philanthropic organisations, local community and government.
Creative Partnerships Australia (see here: https://www.creativepartnershipsaustralia.org.au/how-we-can-help/matched-funding-program/) will match dollar for dollar, up to $50,000, in funds raised from the private sector by artists and not-for-profit arts organisations.
CEO Fiona Menzies states that "we're very excited about investing two million dollars into supporting projects with outcomes that enable individuals and organisations in the creative industries to create a more sustainable financial future."
In order to receive funding, the recipient must engage in approved projects that builds their development capacity and satisfies certain criteria.
The 'Plus1' program takes a holistic approach to funding and is designed to canvass opportunities for artists and not-for-profit organisations in the creative industries who wish to utilise increased private sector support for their artistic dreams.
The program involves a:
- Projects eligibility approval.
- Match funding application.
- Project completion and acquittal.
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.