Fairfax Digital Australia & New Zealand Pty Ltd and Fairfax Media Limited v REA Group Ltd

Fairfax Digital Australia & New Zealand Pty Ltd and Fairfax Media Limited (the Opponents) opposed the registration of a trade mark by REA Group Ltd (the Applicant). The dispute concerned the Applicant's trade mark application for services described as "real estate and related advertising services provided through a website within the .au internet domain space," specifically relating to the mark "realestate.com.au". The opposition was heard by Debrett Lyons, a Hearings Officer for Trade Marks.

The central legal issue before the Hearings Officer was whether the Applicant's trade mark was capable of distinguishing its services from those of other traders, as required by section 41 of the relevant legislation. The Opponents argued that the mark was descriptive of the services and that the addition of ".com.au" did not render it distinctive, asserting that other traders would need to use similar terms. The Hearings Officer was required to determine this issue under section 41 as it stood prior to the 2012 amendments.

The Hearings Officer found that while the trade mark lacked inherent distinctiveness, the evidence established that it had been used to such an extent that it had become distinctive for the services by the filing date. Applying section 41(6)(a) of the Act, the Hearings Officer concluded that the Opponents had not established their ground of opposition. Consequently, the Hearings Officer directed that the trade mark application could proceed to registration, subject to an endorsement noting that acceptance was based on section 41(6)(a). The Applicant was awarded costs against the Opponents.