AUDIENCE PARTICIPATION: American Supreme Court Trade Mark determination and its effects on Australian regulation
To trademark booking.com or not to trademark booking.com that is now the decided question.
The United States Supreme Court has handed down its ruling in the case of UNITED STATES PATENT AND TRADEMARK OFFICE ET AL. v. BOOKING.COM B. V. and the outcome is a little remarkable because it upheld the junior's court decision which said that US Patent and Trademark Office [USPTO] had erred in not allowing 'BOOKING.COM' to be registered a registered trademark. The decision rested on the argument about whether BOOKING.COM was distinctive enough for it to be registered as a trade mark.
The Court decided 8-1 (with the mighty Justice Ginsburg writing the decision) that the USPTO was incorrect when it denied the company's application to trademark the name BOOKING.COM, finding that the name was distinctive enough that it should be capable of registration.
The matter centred around whether the word mark BOOKING.COM was too generic to be registered. The argument against registration was that the term 'booking' was a term that was too generic to be registered and that adding '.com' to the end of that term did not affect the term's registrable status. The Court found against this argument and stated that as BOOKING.COM was a domain name, rather than just merely a company name, then it might be possible to register the trade mark. Registration would only be possible provided that the consumer saw 'BOOKING.COM' as distinguishable of a particular brand. The Court also looked at previously registered trademarks of 'generic.com' terms such as 'art.com' and 'dating.com'.
Ultimately, the Court found that 'BOOKING.COM' is distinguishable enough to be a registered trade mark and that consumers knew that the term was representative of a single service not a class of services and directed the USPTO to register the trademark.
"The Supreme Court has confirmed what millions of consumers
have known for years – Booking.com is a brand name, not
simply a web address. ...[t]he consumer is king when it comes to
brand names, and if consumers perceive a term to be a brand name
and not merely a generic or descriptive reference, then that name
is entitled to trademark protection. This decision is a victory for
countless brand owners that have invested significant resources in
building their brands – such as Weather.com, Law.com,
Wine.com and Hotels.com, as well as others like Home Depot,
Salesforce, TV Guide, Pizza Hut, and The Container Store –
whose trademarks, the Court acknowledged, would have been at risk
if the government's position was accepted."
David Bernstein https://domaininvesting.com/booking-com-wins-supreme-court-tm-case/
As more and more companies transition to a virtual storefront and an online marketplace it is likely that this case will be used to persuade IP Australia to register so called generic.com.au trade marks.
This begs the question, quite interestingly, as to the level of enforcement that Booking.com now have with their sacrosanct trademark. In their application, they conceded that their competitors would be able to use the word 'booking' without that constituting a breach of their trademark. Will other competitors be able to distinguish themselves sufficiently while using domain names similar to Booking.com?
What does this mean for Australia?
In Australia, generic.com.au trade marks have been registered in the past with 'news.com.au' and 'realestate.com.au' both longstanding members of the IP Australia Trade Mark Register. However similar to the position of the US Patents and Trademarks Office, the position of IP Australia is that generic.com.au trademarks are prima facie not capable of registration as the '.com.au' suffix does not distinguish from the generic word before it. IP Australia says that significant use of the mark over a period and a distinguishing of the mark as having a second meaning of trade origin (i.e. an association by the consumer of the trademark with a specific company/product) may lead to successful registration. However, it does not expand the role of consumer's ability to distinguish to the extent of this recent case.
Irrespective of the current stance in Australia of generic.com.au trademark registrations, this recent case is a clear indication that the framework and basis on which a trademark is deemed registrable is changing, hopefully in line with consumer sentiments and a reflection of healthy competition in the marketplace.
This article was produced by MDL's corporate advisory team, Chris Wilkins and Andrew Taylor. Andrew is the director of the Intellectual Property team of MDL and has been in the industry so long, he cannot remember when his career started in corporate advisory and intellectual property. Together, Chris and Andrew make a formidable team in expertly guiding clients through complex transactions, asset protection and strategic restructuring of businesses.
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.