Monday, June 10, 2013 Federal Court decision

On Friday, the Federal Court of Australia handed down its decision in the v. case.

The decision is [2013] FCA 539.

The case concerned a generic term, that was used as a domain name, but where significant advertising had built up recognition of the brand.  The Applicant lost on consumer protection grounds but was successful in relation to trade mark infringement.  The case shows the risks of using a dictionary term as a brand, and the importance of a trade mark registration.

"245    However that observation about the ordinary case does not really address (as neither Perram J nor Chesterman J were called upon to address) a situation where the highly descriptive nature of the second-level domain (“realestate”) makes a suffix such as “” essential to brand or name recognition. Consumers with some familiarity with as a brand are likely to look beyond “realestate” and to the entire domain name in order to establish identity. A real danger of confusion again arises because in the scanning process which may occur on a search results page, some consumers will miss the indistinctive “1”. I have therefore concluded that the use of “” as part of an internet address on a search results page, constituted the use by Real Estate 1 of a mark that was deceptively similar to REA’s trade marks."


Brad Davis said...

I think that these days the average person is acutely aware of the difference between a collection of letters, symbols and/or numbers being arranged in one way and being arranged in another way, being added to or subtracted from.

Generally people understand that a password may for example, be required to have a mix of uppercase, lowercase and characters. Would a reasonable person be mislead by the insertion of the number "1" after the word "realestate"?

You can email me at, would you be likely to confuse me with, or would you be more likely to realise the two addresses are different and confirm which one you should be using?

The trademark infringement makes sense.

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