Descriptive trademarks, logos and domain names
The case of, REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559 (7 June 2013), has indicated that registering even a descriptive domain name incorporating a logo, can result in a very powerful trademark protection. Read the full decision here.
It has always been the case that a trademark which incorporates words and logo, confers protection only on the combination of words and logo. For somebody to infringe the trademark, and the infringing trademark needs to be, what the law calls “a confusingly similar” to the registered trademark (when looking at the registered trademark as a whole, not just part of it).
In this case, the following domain name and logo combination was registered as a trademark:
Adding the logo, allowed the domain name owner to register its domain name as a trademark. Without the logo the domain name would have been too descriptive to be registrable as a trademark. The registered trademark owner was able to then use the registered trademark to stop a competitor from using a similar domain name, namely, www.realestate1.com.au
The question before the court was whether or not a competitor using the domain name www.realestate1.com.au was infringing the registered trademark
The court held that the realestate1 domain name did in fact infringe the registered trademark, despite the fact that:
1. the registered trademark is extremely descriptive, and the law relating to descriptive trademarks is clear that even small changes to the trademark can be sufficient for a competitor to overcome the claim of trademark infringement, and
2. the registered trademark includes a logo, which was absent from use by realestate1.
Realestate1 had to stop using the domain name realestate1.com.au, while the owner of the registered trademark continues to enjoy the right to use www.realestate.com.au
What does this mean for trademark owners?
This means that trademark owners should be more vigilant about registering trademarks which are descriptive. This can be done by adding a logo to the trademark.
Having a descriptive trademark registered, together with a logo, can give a very strong protection even though the words within a trademark are fairly descriptive within the relevant industry.
If the trademark needs to be enforced at a later date, there is a good chance, based on the findings in the realestate.com.au case, that others using the descriptive part of the trademark, even if they add something to it, might well be found to infringe the registered trademark.
By Cathryn Warburton. © 2015 Acacia Law.
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