Australia: Trade mark use and the internet – keywords and search engine optimisation

When considering Australian trade mark law in the context of the internet, no special principles apply. A challenge to use of key words, search engine optimisation (or even registration and use of domain names) relies on established causes of action such as infringement of a registered trade mark, passing off or statutory misleading and deceptive conduct.

A recent Federal Court case which involved these recognised causes of action in the context of search engine optimisation is the Full Court decision of Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2014] FCAFC 75.

Trade mark use and online marketing (Lift Shop case)

  • The Lift Shop case does not represent a shift in Australian trade mark law/unlawful passing off, rather, it is merely an application of orthodox principles in the context of "search engine optimisation".
  • In the internet environment, the position in Australia is that use by an advertiser of a third party competitor trade mark owner's mark as a key word to improve the advertiser's rankings in search engine results (search engine optimisation), is not enough, without more, to constitute use "as a trade mark" or unlawful passing off under Australian law. There is no trade mark use as the keyword is not used by the advertiser as a "badge of origin" for the advertiser's goods or services.
  • Commercial organisations should consider key word advertising in search engine practices in light of their appetite for risk and the commercial market in which they operate.

Recap

It is convenient to briefly recap the general principles under Australian trade mark law in the context of the internet:

  • Trade mark "use" only occurs when a trade mark is used as a "badge of origin" ie to distinguish goods and services provided in the course of trade from those other traders ( E&J Gallo Winery v Lion Nathan Australia Pty Limited[2010] HCA15; Trade Marks Act 1995 (section 120)). This concept is embodied in the statutory definition of a trade mark (Trade Marks Act 1995 (section 17)).
  • There is no Australian decision concluding that use by an advertiser of a third party competitor trade mark owner's mark as a keyword for sponsored advertisements (or in metatags) is sufficient to constitute use "as a trade mark" or unlawful passing off. The issue was discussed in the Victorian Supreme Court decision of Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) (2010) 86 IPR 19 (Reeves J), without being determined.
  • The Mantra case related to the use of websites, offering services competing with the trade mark owner's services, at domain names similar to the trade mark owner's marks. The court found, applying orthodox principles, that use of the domain names for the websites amounted to trade mark use and, hence, infringement rather than, as claimed by the defendant, use that merely described the location and the range of services offered.
  • International examples are of less relevance in the Australian context for the purposes of considering trade mark infringement under Australian law, as a different legal system and set of principles apply. Australia lacks a true dilution law when compared to the "antidilution" provisions in legislation enacted in the United States and EU.

Trade marks and search engine optimisation: no trade mark infringement or unlawful passing off established (Lift Shop case)

On 20 June 2014, the Full Court confirmed it was not trade mark infringement to use words of a composite trade mark (LIFTSHOP) in the title of a web page in search results: Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2014] FCAFC 75 (Besanko, Yates and Mortimer JJ). The Full Court did not address questions of statutory misleading conduct or passing off, as those matters were not challenged on appeal (the trial judge had found that there was no misleading representation to consumers in using the word "lift shop" in its search engine results: Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2013] FCA 900, Buchanan J).

Background

On 20 November 2012, Lift Shop Pty Ltd commenced proceedings in the Federal Court against its close rival in the home elevator/lift market, Easy Living Home Elevators Pty Ltd. The mark LIFT SHOP (logo) represented below, had been registered in Australia by Lift Shop Pty Ltd since 11 September 2007 in respect of goods in class 7 (elevators (lifts)):

IMAGE HERE

Lift Shop and Easy Living both supplied customised elevators/lifts and disability platform elevators in Australia, at similar price points and products of a comparable standard (sourced from China and Europe respectively). Although both companies competed across Australia, most of their business was in New South Wales.

During 2012, Easy Living took steps to improve its position arising from internet searches by retaining an agency specialising in "search engine optimisation" (which is a form of online marketing designed to improve rankings in search engine results). This led to Easy Living introducing changes in its marketing, which included the addition of the term "Lift Shop" in the title of the website, the term "lift shop" in the content of the home page and nomination of "lift shop" as a key word.

The effect of those changes was that for any search using or including the term "lift shop", both Lift Shop and Easy Living appeared on page one of search results and their entries were in very close proximity. The "titles", URLs and descriptions appearing in search results for each company was as follows:

Australia's No 1 for Luxury Home Elevators | Lift Shop | Multi-Award...
www.liftshop.com.au/
Lift Shop is Australia's No. 1 multiple award-winning leader in quality, luxury home elevators. Lift Shop is a national supplier of luxury home lifts, residential lifts...
Easy Living Lifts | Home Elevators | Lift Shop – Home Elevators...
www.easy-living.com.au
At Easy Living home elevators website you will find details on all of our lifts and home elevators here, which will help you achieve the easy living you deserve.

When an internet search for "lift shop" was carried out, the evidence also showed that Easy Living and Lift Shop were not the only businesses which appeared in search results. For example:

Lift Shop
www.MonorailElevators.com.au
Stairlift & Homelift Specialist To Suit All Homes. Call Now. Sydney.
Lift Shop Equipment > > Home
www.liftshopequipment.com
Lift Shop Equipment is a equipment repairs service, that services forklifts, farm equipment, construction equipment and any other types of repair. Need a part for...

No passing off or statutory misleading conduct established

Although the trial judge found one commercial objective of Easy Living was to appear in search results which were likely to identify Lift Shop, its conduct did not amount to a misleading representation to consumers of an association between the companies (or an infringement otherwise of Lift Shop's reputation rights).

Rather, the trial judge found that "...the respondent sought to obtain business in open competition with the applicant" (at [31]) and the "two sets of information were presented as alternatives, consistent with the idea that the parties were competitors rather than being associated" (at [38]).

In reaching this conclusion, an important factor was that there was a clear differentiation between the entries relating to each party which appeared on any search page. The court noted that the URLs were quite different, as well as the description in the titles, and the URL of each company (www.easy-living. com.au and www.liftshop.com. au) had a close association with its own mark. There was also no reference on the search page itself to suggest any association between the two businesses, and any visit by a potential consumer to each company's website would confirm the separate nature of the businesses.

The trial judge also accepted evidence given by Easy Living's managing director that his view was that Easy Living's reputation would not be enhanced by any association with Lift Shop where Easy Living portrayed itself as a source of good quality European lifts and elevators while the applicant's source of supply was China.

These findings were not challenged on appeal.

No trade mark infringement established

The action brought by Lift Shop on trade mark infringement concerned use by Easy Living of "Lift Shop" in the title of its web page as shown by search results. This action failed, as the trial judge found that Easy Living did not use the term "Lift Shop" "...as a mark, much less its own mark....the term was used in a descriptive way to take advantage of the operation of the search engine" (at [43]).

In reaching this conclusion, the trial judge noted that Easy Living did not wish to suggest any association with Lift Shop, and that other businesses had also used the term "lift shop" in their titles (with the Bing search engine using this term to group the lift businesses together).

Applying orthodox principles, the Full Court unanimously agreed that use of the term "lift shop" was used in a descriptive way by Easy Living, and did not amount to trade mark use or infringement. The Full Court stated:

"...Those searching the internet using the search term "lift shop" would have understood, on seeing the displayed results, and in particular the words "Lift Shop" in the title of the respondent's web page, that the respondent was using those words to convey that its business was one of supplying "lifts" and "home elevators". Although the use of the words "Lift Shop" was given some prominence because of their use in the title of the respondent's web page, neither that fact, nor the positioning of those words within the title, imbued them with the character of a trade mark. The use of the words "Lift Shop" ...makes clear that their only functional significance was to describe the character of that business. Their use by the respondent was not to distinguish its business from others. To the contrary, in the larger setting provided by the results pages, the use of those words was to designate, and would have been understood as designating, that the respondent's business was of the same character as, or at least of a similar character to, other businesses grouped and operating as "lift shops". Such use is the antithesis of trade mark use. " (at [46]) (emphasis added

As there was no trade mark use (and hence no trade mark infringement), it was not necessary to deal with the allegation of deceptive similarity. Assuming however that the term "Lift Shop" had been used as a trade mark, the Full Court agreed with the trial judge's analysis that the words "Lift Shop" used by Easy Living in the title of its web page would be deceptively similar to the applicant's registered mark LIFTSHOP.

Lessons

The decision represents an application of orthodox principles, namely that use by an advertiser of a third party competitor trade mark owner's mark could only amount to trade mark infringement if the advertiser's conduct involved use of the third party's mark "as a trade mark". Further, conduct could only amount to misleading and deceptive conduct in breach of the Australian Consumer Law and passing off, if there was a false or misleading representation to consumers of a sponsorship or affiliation with the owner of the third party mark.

On one view, in substance, search engine optimisation, or conduct such as key word advertising, is analogous with a competitor placing an outdoor billboard advertisement adjacent to a competitor's place of business or own billboard. The conduct indicates that an alternative is available to the competitor's offering. There could be no trade mark infringement, misleading or deceptive conduct or passing off in such an activity, without more, and it appears simply to be healthy competitive conduct.

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.

Most awarded firm and Australian deal of the year
Australasian Legal Business Awards
Employer of Choice for Women
Equal Opportunity for Women
in the Workplace (EOWA)

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.