Opposition by REA Group Ltd to registration of trade mark application number 1890093 (class 9, 35, 36, 37, 38, 41, 42) – REALESTATESTORE.COM.AU and device - in the name of Real Estate Store Pty Ltd

[2021] ATMO 18

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by REA Group Ltd to registration of trade mark application number 1890093 (class 9, 35, 36, 37, 38, 41, 42) – REALESTATESTORE.COM.AU and device - in the name of Real Estate Store Pty Ltd

Delegate:	Katrina Brown
Representation:	Opponent: Jurgen Bebber of Corrs Chambers Westgarth Applicant: Andrew Sykes of Counsel
Decision:	2021 ATMO 18 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pursued under ss 42(b), 44, 60 and s 62A – s 60 established – registration refused.

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) by REA Group Pty Ltd (‘Opponent’) to registration of the following trade mark:

Trade Mark No:

1890093

Trade Mark:

Endorsement:

Applicant:

(‘Trade Mark’)

The trade mark registration is limited to the colours YELLOW, RED, DARK BLUE, GREEN, LIGHT BLUE and BLACK as shown in the representation of the trade mark attached to the application form.

Real Estate Store Pty Ltd (‘Applicant’)

Filing Date:

30 November 2017

Specification: 

Class 9: Computer software; Computer software applications (downloadable); Computer software downloaded from the internet; Computer software products; Downloadable software applications (apps); Magazines downloaded via the internet; Electronic publications including those sold and distributed online; Electronic directories; Databases; Database programs

Class 35: Compilation of information into computer databases; Maintaining data in databases; Advertising; Advertising services provided over the internet; Organisation of housing and real estate displays and exhibitions for promotion or advertising purposes; Real estate auctioneering; Compiling real estate brokerage listings; Compilation and provision of online directories; Computer assisted business information; Business finding services; Business referrals services; Retail services; Provision of an on-line marketplace for buyers and sellers of goods and services; Promotional services; Business project management services for construction projects; Surveys (opinion polling)

Class 36: Consultation services relating to real estate; Providing information, including online, about insurance, financial and monetary affairs and real estate affairs; Real estate advisory services; Real estate agency services; Real estate investment services; Real estate services relating to property development; Provision of online financial calculators; Provision of online mortgage repayment calculators; Provision of financial information via an online calculator; Consultation services relating to financial matters; Insurance consultancy; Provision of information relating to mortgages; Consultancy services relating to investment; Provision of investment information

Class 37: Advisory services relating to property development building and construction services; Building construction consultancy; Development of property (building and construction services); Providing information, including online, about building construction, and repair and installation services; Building project management; Advisory services relating to the renovation of property; Project preparation relating to building renovation

Class 38: Providing access to databases; Electronic transmission (uploading, posting or displaying) of data, information, pictures, images, audio and/or video via online forums; Providing online forums; Communication services for the transmission of information by electronic means; Transmission of information on a wide range of topics, including online and over a global computer network; Electronic transmission of data; Electronic transmission of images; Electronic message services; Message boards; Provision of links to other websites

Class 41: Education services; Provision of education services via an online forum; Arranging and conducting of workshops (training); Training; Arranging and conducting of seminars; Electronic publication of information on a wide range of topics, including online and over a global computer network; Providing online electronic publications (not downloadable); Publication of news

Class 42: Online provision of web-based applications (non-downloadable); Computer support services (programming and software installation, repair and maintenance services); Information technology (IT) services (computer hardware, software and peripherals design and technical consultancy); Creating indexes of online websites and information sources; Design and development of online calculators; Hosting of online calculators; Providing information, including online, about design and development of computer hardware and software; Provision of online non-downloadable software (application service provider); Creating and designing web pages for others, including creating virtual communities for registered users to interact and participate in discussions; Real estate surveys; Preparation of reports relating to computer programs; Hosting of databases; Electronic data storage; Design services; Design planning; Real estate planning; Research relating to buildings

(‘Applicant’s Goods and Services’)

1. The trade mark application was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 26 April 2018.

2. The Opponent filed a Notice of Intention to Oppose on 25 June 2018, followed by a Statement of Grounds and Particulars (‘SGP’) on 12 July 2018.

3. The Applicant filed a Notice of Intention to Defend on 3 August 2018.

4. The Opponent filed the following declarations as evidence in this opposition:

• Declaration of Scott Andrew Holmes (Opponent’s Innovation and Strategy Manager) made on 9 November 2018 with Annexures SAH-1 to SAH-42 (‘Holmes Declaration’); and

• Declaration of Tim Guy (Legal Counsel) made on 8 July 2019 with Exhibits TG-1 to TG-2.

1. The Applicant filed the following declarations as evidence in this opposition:

• Declaration of Jacqueline Louise Pryor (Applicant’s legal representative) made on 25 February 2019 with Exhibits JP-1 to JP-21;

• Declaration of John Romaine (Founder of SEO Point) made on 27 February 2019; and

• Declaration of Dimitri Kentrotis (Director of the Applicant) made on 28 February 2019.

1. The matter was heard by me, a delegate of the Registrar of Trade Marks. The Opponent was represented by Jurgen Bebber of Corrs Chambers Westgarth and instructed by his colleague Jennifer Wrigley. The Applicant was represented by Andrew Sykes of Counsel, instructed by Jacqueline Pryor of Mark My Words Trademark Services Pty Ltd.

Grounds of opposition, onus and relevant date

1. In the SGP, the Opponent nominated grounds under ss 42(b), 44, 60 and s 62A.

2. The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[1] In the event that the Opponent establishes one of the grounds in relation to all of the Applicant’s Goods and Services, there is no requirement for me to consider the other grounds of opposition.

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].

3. The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [133].

4. The date at which the rights of the parties are to be determined is 30 November 2017 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

Section 60

1. Section 60 of the Act provides:

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

2. To establish this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia at the Relevant Date. The Opponent must then establish that because of the aforesaid reputation use of the Trade Mark would be likely to deceive or cause confusion.

3. In the SGP, the Opponent nominated the following trade marks as the basis for this ground of opposition:

Realestate.com.au

Reputation

1. For the purposes of s 60 ‘reputation’ it is ‘the recognition of the [trade mark] by the public generally’.[3] It has also been expressed as recognition of the other trade mark by a ‘significant’ or ‘substantial’[4] number of people or potential consumers. Reputation cannot be assumed; it must be established as a matter of fact by the Opponent.[5] In Rodney Jane Racing Pty Ltd v Monster Energy Company it was observed that:

   The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[6]

   [3] McCormick & Company Inc v McCormick [2000] FCA 1335 [81].

   [4] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170.

   [5] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159 [77].

   [6] [2019] FCA 923 [83].

2. In this matter, I am satisfied that the evidence clearly establishes that, at the Relevant Date, there was recognition by the public generally of the following trade mark (‘the Opponent’s Trade Mark’):

1. Given my finding under s 60 in respect of the Opponent’s Trade Mark it has not been necessary to consider whether the Opponent has a reputation in its other trade marks detailed above at [14].

2. The Opponent has operated a property listings website at the domain name ‘ (‘Opponent’s Website’) since 1998. The Opponent’s Trade Mark has been used in relation to the Opponent’s business, since 2011. The Opponent has provided a considerable amount of evidence going to the issue of reputation. Some of this evidence is described in [3] of the Holmes declaration as being commercially sensitive and I have made every effort not to disclose information in the nominated ‘Confidential Annexures’ in this decision. The following is merely a snapshot of the material contained within the Holmes Declaration that goes toward the quantitative and qualitative dimensions of the reputation in the Opponent’s Trade Mark:

• In the financial year ending June 2012, revenue generated from businesses operated in Australia under the ‘realestate.com.au brand’ was approximately 246 million dollars. In the financial year ending June 2015, the revenue was approximately 470 million dollars (Holmes Declaration [94]).

• In the financial year ending June 2012, the Opponent’s marketing expenditure relating to the ‘realestate.com.au brand’ was approximately 32 million dollars. In the financial year ending June 2015, the marketing expenditure was approximately 48 million dollars (Holmes Declaration [94]).

• The Opponent’s Trade Mark is displayed on the Opponent’s Website. In June 2011, there were 6.7 million unique visitors to the Opponent’s Website (Holmes Declaration, Annexure SAH-13). By June 2017, the average number of monthly visits to the Opponent’s Website was 49.9 million (Holmes Declaration, Annexure SAH-19).

• The Opponent’s Trade Mark is displayed on the Opponent’s application for Apple and Android devices (‘Opponent’s App’). In July 2012, the Opponent’s App surpassed 1.2 million downloads (Holmes Declaration, Annexure SAH-14). By the Relevant Date the Opponent’s App downloads had grown substantially and continued to grow (Holmes Declaration, Confidential Annexure SAH-26).

• The Opponent’s Website was considered the ‘first port of call’ for 8 out of 10 consumers researching property in 2013 (Holmes Declaration, Annexure SAH-15).

• The Opponent’s App was awarded an Australian Mobile Award for Mobile Innovation – Best Mobile Expanded Service or Application in 2013 (Holmes Declaration, Annexure SAH-15).

1. By any standards, these figures and statistics are substantial and demonstrative of the very strong reputation of the Opponent’s Trade Mark in respect of the provision of real estate listings; compiling, maintaining and providing access to online directories/databases of real estate listings; advertising and the provision of information including electronic publications about real estate. The evidence also demonstrates that the Opponent’s Trade Mark has a reputation in respect of a variety of other services associated with property and real estate such as arranging and conducting training and education for the real estate profession including property development.  

2. I now need to determine whether, in light of the reputation in the Opponent’s Trade Mark, use of the Trade Mark would be likely to deceive or cause confusion.

Likely to deceive or cause confusion

1. The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[7]

   [7] [1979] RPC 410, 423.

2. In Australian Postal Foundation Corporation v Digital Post Australia Pty Ltd it was noted that ‘the threshold for confusion is not high’.[8] Importantly confusion can be established ‘even if [the] confusion is unlikely to persist up to the point of, and contribute to, inducing sale’.[9] Also, confusion need not be a case of mistaking one trade mark for another; it can be wondering whether the trade marks, which might be readily distinguished from each other, nonetheless come from the same source.[10]

   [8] [2013] FCAFC 153 [70].

   [9] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 [105].

   [10] In the Matter of John Fitton & Co Limited’s Application (1949) 66 RPC 110, 113.

3. Section 60 of the Act does not require that the goods or services upon which the Opponent’s Trade Mark are used be of a specified standard of similarity with the Applicant’s Goods and Services, nor is there a requirement that the trade marks be substantially identical or deceptively similar. However:

   Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent's trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[11]

   [11] Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd [2010] ATMO 5 [39].

4. In the current matter, many of the Applicant’s Goods and Services are the same or of a similar description to the variety of real estate and property related goods and services for which the Opponent’s Trade Mark has a substantial reputation.

5. With respect to the similarity of the trade marks, the Opponent’s Trade Mark consists of an arrow device on a red background, to the right of which is the domain ‘ The Trade Mark consists of a multi-coloured arrow device, to the right of which is the domain ‘ with the word ‘store’ being in the colour red. The similarities of an arrow device (presumably representative of a house) and a domain incorporating the words ‘real estate’ may not seem all that remarkable given that real estate is the key area of interest of both the Opponent and the Applicant. However, it is convenient to reiterate that the trade marks do not need to be deceptively similar, to fall foul of s 60.

6. At this point I note that the trade marks share a large proportion of common elements being ‘real estate’ and ‘.com.au’. These elements are generic or descriptive of many of the goods and services offered under both trade marks. Notwithstanding this, the trade marks have more than enough similarities, especially with regard to the non-descriptive elements, for confusion to arise.

7. Bearing that in mind, I note the following:

• The layout or configuration of the trade marks is similar – both consist of an arrow device to the right of which is a domain name.

• Red is the key colour in the Opponent’s Trade Mark. The word ‘store’ is red in the Trade Mark, somewhat emphasising the colour red in the Trade Mark (noting that the Trade Mark has a colour endorsement restricting the colours to those shown in the representation of the Trade Mark).

• In the Trade Mark, the word ‘store’ is represented in the colour red, ‘realestate’ and ‘.com.au’ are represented in black. This juxtaposition not only emphasises the word ‘store’, but also has the effect of drawing attention to, and encouraging the elements that are not represented in red to be connected, namely ‘realestate.com.au’.

• The arrow devices in the trade marks are virtually identical, the only difference being that the device in the Trade Mark is multi-coloured. Whilst this device is arguably a simple outline of a home, there are a multitude of other ways to depict a home in a simplistic way (for example adding squares to represent windows, or a rectangle to represent a door).  

1. I am satisfied on the evidence before me that the Opponent has a pattern of brand extension in which the arrow device is a prominent feature. The Opponent’s brand extensions comprise the arrow device in varying colours, to the right of which is a domain name being ‘ or  variations incorporating the word ‘real’ such as ‘ ‘realholidays.com.au’ or ‘realbusinesses.com.au’. I also note that on occasion the Opponent has made slight variations to its branding to show support for specific initiatives. In November 2017 (before the Relevant Date) the following variation appeared on the Opponent’s Website in support of marriage equality (Holmes Declaration, Annexure SAH-42):

1. Considering all of the above and the extent of the reputation in the Opponent’s Trade Mark, I am satisfied that there is a real and tangible danger that consumers would, at the very least, be caused to wonder as to the existence of some sort of connection between the goods and services bearing the Opponent’s Trade Mark and those bearing the Trade Mark.

2. The s 60 ground of opposition has been established.

Decision

1. Section 55 of the Act relevantly provides:

   (1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a) to refuse to register the trade mark; or

   (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

2. Accordingly, I refuse to register trade mark number 1890093.

Costs

1. The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Applicant according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995.

Katrina Brown
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
4 March 2021