The REA Group, a company that runs two of the largest real estate websites—http://www.realestate.com.au and http://www.realcommercial.com.au—in Australia has been successful in protecting its trade marks after a competitor began operating a similar business on the websites www.realestate1.com.au and www.realcommercial1.com.au. However, the court has handed down limited orders due to the descriptive nature of the trade marks. REA Group has two registered trade marks for REALESTATE.COM.AU and REALCOMMERCIAL.COM.AU in the following logo format: The Federal Court of Australia held that the Respondents’ use of the domain names realestate1.com.au and realcommercial1.com.au and the logo shown below, infringed REA Group’s trade marks. The Court considered use in the advertising and marketing for the websites, including sponsored links and organics search results. Unsurprisingly, it was held that the addition of ‘1’ in the infringing trade marks was “indistinctive”. See the Judgment of the Court (26 September 2013). The Court ordered that the domain names be transferred and permanently restrained the Respondents’ from using www.realestate1.com.au and www.realcommercial1.com.au in relation to any real estate business. While REA Group wanted additional orders, restraining the Respondents from using a sign substantially identical with or deceptively similar REA’s trade marks, their own distinctiveness issues made this difficult for the Court. Indeed, the Court stopped short of prohibiting Real Estate 1 from using a sign substantially identical with or deceptively similar to www.realestate1.com.au because it considered ‘real estate’ a descriptive term, and that small differences would distinguish a rival’s business from that of REA Group. It seems that the Court’s thoughts were a self-fulfilling prophecy – Real Estate 1 now runs its business from www.realestate1.net.au, which REA Group said it had no problem with. Sources: REA Group Ltd v. Real Estate 1 Ltd (No 2) [2013] FCA 968

This article was repared by Emma Bekens (emma.bekens@nortonrosefulbright.com / +61 2 9330 8943) of Norton Rose Fulbright’s Sydney intellectual property group and Julian Soo (Graduate – Norton Rose Fulbright Melbourne).