Davley Building Pty Ltd T/a GrannyflatsWA.com v Granny Flats Australia Pty Ltd

Davley Building Pty Ltd, trading as GrannyflatsWA.com, commenced proceedings against Granny Flats Australia Pty Ltd in the Federal Court of Australia. The dispute concerned allegations of misleading and deceptive conduct and passing off, arising from the respondent's use of the domain name "grannyflats.com.au" and associated marketing materials. The applicant contended that this conduct infringed its registered trade mark "GRANNYFLATS.COM.AU" and its common law trade mark rights, causing confusion in the marketplace and damaging its business.

The primary legal issues before the Court were whether the respondent's conduct constituted misleading or deceptive conduct in contravention of section 18 of the Australian Consumer Law, and whether it amounted to passing off at common law. Specifically, the Court had to determine if the respondent's use of its domain name and marketing materials was likely to deceive or confuse consumers into believing that its services were affiliated with, or originated from, the applicant. The Court also considered the scope and validity of the applicant's trade mark rights.

Her Honour Deirdre O’Brien found that the respondent's use of the domain name "grannyflats.com.au" and its marketing activities were likely to mislead or deceive consumers into believing that the respondent's business was associated with the applicant. This conclusion was based on the substantial overlap in the services offered by both parties and the similarity of their trading names and domain names, which created a real and substantial risk of confusion. The Court held that this conduct contravened section 18 of the Australian Consumer Law and also constituted passing off at common law. The applicant's trade mark was found to be valid and infringed by the respondent's actions.

The Court ordered that the respondent be permanently restrained from using the domain name "grannyflats.com.au" and from engaging in conduct likely to mislead or deceive consumers into believing that its business is associated with the applicant. The respondent was also ordered to pay the applicant's costs of the proceeding.