Lift Shop Pty Ltd v Easy Living Home Elevators Pty
Ltd  FCAFC 75
Use of elements of a competitor's trade mark on a website
– trade mark use or descriptive use?
LS and ELHE were direct, aggressive competitors, each supplying
disability platform elevators for home use.
ELHE's search engine optimisation consultant advised that
ELHE could improve its search engine rankings by including
"lift shop" in its key words, website title and website,
an example search result being as follows:
Easy Living Lifts | Home Elevators | Lift Shop – Lift
LS holds a registered trade mark for the LIFTSHOP logo covering
elevators/lifts (class 7):
LS sued ELHE alleging trade mark infringement, breach of section
18 of the Australian Consumer Law (ACL) (misleading and deceptive
conduct) and passing off (this ground not pursued).
ELHE argued that it was using the term "lift shop"
descriptively or generically, not as a trade mark.
LOWER COURT DECISION
ELHE succeeded. The trial judge agreed that ELHE's use was
descriptive use and not use as a trade mark, and that no breach of
the ACL had occurred.
The term "lift shop" was used in various websites of
businesses selling home elevators.
Consumers would understand the term was used generically, not as
an intended association with LS.
The website search results showed clearly that the website
belonged to ELHE and not LS.
If ELHE's use had been trade mark use, its use would have
been deceptively similar to LS' trade mark.
LS appealed to the Full Federal Court on the issue of trade mark
FULL FEDERAL COURT DECISION AND REASONING
The Full Federal Court agreed that ELHE's use was
descriptive and dismissed the appeal.
ELHE was not using the words to distinguish its goods from other
traders but to describe the nature of its business and ensure its
website appeared in searches along with those of other traders in
the goods – "the antithesis of trade mark use".
It was open to the primary judge to find that while "lift
shop" is descriptive, the words are a prominent part of the
trade mark and therefore ELHE's use would have been deceptively
similar if it was trade mark use.
Even if ELHE had used the term in a trade mark sense, it had a
defence under section 120(2) of the Trade Marks Act 1995 as such
use was not likely to deceive or cause confusion.
Words contained in a registered trade mark owned by someone else
can be used descriptively, with care.
Infringement is less likely if the words are descriptive of the
particular goods or services.
Invented words make much better trade marks from an enforcement
perspective as it will be difficult for a competitor to justify why
it has used the words.
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.
Shelston IP has been awarded the MIP Global Award for
Australian IP Firm of the Year 2013.
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