Monday, October 28, 2013

Trade Marks and Domain Names: the importance of notoriety

Two Australian trade mark disputes involving domain names this year are worth noting, primarily because the outcomes were different despite the two cases having similarities at first glance.

The first one is REA Group Ltd v Real Estate 1 Ltd. The key issue was confusion between REA Group's very well-known and Real One's domains. The court accepted that Real One's logo did not "pass off" REA Group's logo or infringe on their trademark. You can check the two companies logo below for comparison:

Top: Real One's logo. Bottom: REA Group's logo

REA Group's trade mark (TM No 1478263)

However, the court found that Real One's URL, when used in certain types of ads like this:

real one ad

...constituted trade mark infringement. In Bromberg J's own words:

In my view, the display of the term “” in the heading of a sponsored link would have been regarded by many consumers to be the trading and domain name of the business whose link it was. One of the central distinguishing features of REA’s trade marks is the idea that the term “” is both a brand name and a domain name at the same time. When Real Estate 1 used “” as a trading name, it took up that precise idea. In that context consumers are likely to pay substantive attention to “” because it serves the function of identifying the brand whose domain name is also being used as a brand. The whole of the domain name is likely to be read or at least scanned. In a circumstance such as that, there was in my view, a real danger of confusion on the part of a consumer familiar with REA’s trade marks. That principally arises because in a scanning process of the kind which can occur on a search results page, the “1”, which is not very distinct in the context of a domain name in ordinary type face, is likely to be missed by some consumers.

Bromberg J has since ordered the transfer of the disputed domains to REA Group. On the face of it, the court gave REA Group a monopoly right in the words "real estate", since the ccTLD "" is entirely indistinctive. It was however the notoriety of which got this argument across the line.

The other case concerns Vendor Advocacy Australia’s attempts to recover several domains related to their name, such as,, and from a former employee, Mr. Seitanidis (Vendor Advocacy Australia Pty Ltd v Seitanidis).

Vendor Advocacy Australia did not have any registered trade marks, so they have to go with 'misleading or deceptive conduct' contrary to the Australian Consumer Law. This legislation is enormously flexible and ordinarily pleaded in parallel to trade mark infringement and passing off.

Unfortunately for Vendor Advocacy Australia, the court deemed the phrase "vendor advocacy" as descriptive and commonly used by various traders in the industry - in Middleton J's own words:

…. The phrase “vendor advocacy” is descriptive and was generally used by various traders in the same line of business. I am not satisfied that the words or brand relied upon in this proceeding by VAA have any secondary distinctive meaning. VAA has primarily promoted itself by reference to the persona of Ian Reid. I do not consider that any consumer which assume that a reference to vendor advocacy, or Australian Vendor Advocacy, would be associated with VAA or Ian Reid. In fact, because Ian Reid has been so much at the front of the promotion of VAA, without his presence the consumer may well assume it is not associated with him or VAA. Any imperfect recollection of consumers would arise from VAA’s adoption of a name consisting of descriptive words. The lack of recall will be as a result of the promotional activity adopted by VAA, by reference to the descriptive words ‘vendor advocacy’.

The utility of trade mark registrations in domain name disputes is starkly outlined by these two decisions, as well as the importance of notoriety. In Vendor Advocacy Australia Pty Ltd v Seitanidis the court esentially found that the confusion consumers may experience from similar domain names do not necessarily constitute misleading or deceptive conduct, particularly if the domain is a descriptive term. It also outlines the importance of registering a trade mark to protect your domain, as it is very likely that the REA Group might not have been successful if they did not have the trade mark and had to fall back on misleading or deceptive conduct.

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