Customers are increasingly using the internet to find businesses
and services to meet their needs. Given the significant volume of
material available online, one could easily understand the lengths
businesses would go to to optimise their visibility online.
However, before implementing a strategy to improve your rankings
you should be careful that your actions do not infringe the rights
of your competitors or other traders. The recent case of Lift
Shop Pty Ltd v Easy Living Home Elevators  FAFC 75
illustrates how a strategy to improve online visibility could
result in an expensive legal dispute.
Lift Shop Pty Ltd and Easy Living Home Elevators operated within
the same market as providers of customised elevators. In 2012, Easy
Living wanted to improve its online visibility in search engine
results and sought to do so, by placing the term 'Lift
Shop' in the headline of their search results. This meant that
Easy living would appear in the list of results where users typed
'Lift Shop' into their search engine. Lift Shop Pty Ltd is
the owner of the following registered composite trademark:
Lift Shop Pty Ltd alleged that Easy Living Home Elevators had
infringed the trademark by using the words 'Lift Shop' in
the title of its web page as shown by search results.
In considering whether Easy Living's use of the term
'Lift Shop' was capable of infringing Lift Shop Pty
Ltd's trade mark, the Court had to consider whether the trade
mark was used as a badge of origin. That is, did Easy Living use
the term to indicate the origin of their products and to
distinguish their goods and services from competitors?
The trial judge found that Easy Living had not breached Lift
Shop Pty Ltd's trademark. The determination was made in light
of the following facts:
'Lift Shop' was being used as a descriptive term and to
take advantage of the operation of the search engines.
In this area of commercial endeavour, the term 'Lift
Shop' had an understood generic connotation and was capable of
The term 'Lift Shop' was used descriptively by
businesses that had no association with Lift Shop Pty Ltd or Easy
Although the use of the term 'Lift Shop' formed part of
a marketing strategy intending to increase the business'
competiveness, Easy Living had not intended to associate itself
with Lift Shop.
On appeal, the Full Court found that no trade mark had been
infringed by Easy Living. They agreed with the reasoning at first
instance that the term's 'only functional significance
was to describe the character of the business.' The Full
Court found that 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 Easy Living's web page, that Easy Living was using
those words to convey that its business was one of supplying
'lifts' and 'home elevators'.
While use of a descriptive term in the headline of a
business' search result that forms part of a registered
trademark may not constitute a trade mark infringement, businesses
should still exercise caution when using such terms. While Easy
Lift may have won the battle, the litigation would undoubtedly have
been costly and lengthy. You should always consult your lawyer
before implementing a strategy that includes the use of a third
party's trade mark.
This case highlights the difficulty that may be experienced
where the registered trademark is descriptive of the owner's
products. When developing a brand, it is always best to steer clear
of descriptive words. Such words are difficult to register, however
as seen in this case it is also difficult to establish whether
other traders are using those words as a trade mark or using those
words to describe their goods or services .
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.
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