REA Group Limited v Realestateasia.com.au Pty Limited

[2018] ATMO 49

TRADE MARKS ACT 1995

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

Re:Opposition by REA Group Limited to registration of trade mark application 1699016 (35, 36, 38, and 42) - realestateasia.com.au (Logo) - in the name of realestateasia.com.au Pty Limited.

Delegate:	Decision on the Written Record Iain Campbell Thompson
Representation:	Opponent: Baxter Patent Attorneys Pty Ltd –written submissions Applicant: Corrs Chambers Westgarth – written submissions
Decision:	2018 ATMO 49 Trade Marks Act 1995 Section 52 opposition to registration: section 60 - reputation of the Opponent’s Trade Mark, use of Trade Mark likely to confuse or deceive because of reputation of Opponent’s Trade Mark. Opposition established - registration refused.

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) realestateasia.com.au Pty Limited (‘the Applicant’) seeks registration of the trade mark which appears below:

Application No:         1699016

Priority Date:             17 June 2015

Services:Class 35: Compiling real estate brokerage listings; Organisation of housing and real estate displays and exhibitions for promotion or advertising purposes; Real estate auctioneering

Class 36: Advisory services relating to real estate ownership; Advisory services relating to real estate valuations; Agency services for the leasing of real estate property; Appraisal of real estate; Brokerage of real estate; Capital investment in real estate; Commercial real estate agency services; Consultation services relating to real estate; Evaluation of real estate; Financial evaluation (insurance, banking, real estate); Financing of real estate developments; Insurance services relating to real estate; Leasing of real estate; Management of real estate; Property leasing (real estate property only); Property sales services relating to real estate development; Providing information, including online, about insurance, financial and monetary affairs and real estate affairs; Provision of information in relation to real estate; Provision of information relating to property (real estate); Provision of information relating to real estate; Provision of real estate loans; Real estate acquisition (for others); Real estate administration; Real estate advisory services; Real estate agencies; Real estate agency services; Real estate agents services; Real estate appraisal; Real estate appraisals (valuations); Real estate assessment (financial); Real estate brokerage; Real estate broking; Real estate consultancy; Real estate financing; Real estate insurance services; Real estate investment; Real estate investment advice; Real estate investment management; Real estate investment services; Real estate lease renewal services; Real estate lease surrender services; Real estate leasing; Real estate licensing; Real estate management; Real estate selection and acquisition (on behalf of others); Real estate services relating to property development; Real estate services relating to real estate development; Real estate valuations; Rental of offices (real estate); Rental of real estate; Rental of serviced offices (real estate); Research services relating to real estate; Stock and station agencies (real estate services); Subdivision of real estate (real estate services); Valuation of real estate
Class 38: Advisory services relating to telecommunications; Cellular telecommunications services; Charitable services, namely telecommunications; Chat room services (telecommunications services); Communication of data by means of telecommunications; Consultancy services relating to telecommunications; Data transmission services over telecommunications networks; Delivery of digital music by telecommunications; Digital network telecommunications services; Electronic bulletin board services (telecommunications services); Fibre optic telecommunications services; Hire of telecommunications apparatus; Hire of telecommunications instruments; Information services relating to telecommunications; Internet cafe services being the provision of telecommunications access to the internet; Message storage and transmission (telecommunications); Providing information, including online, about telecommunications
Class 42: Designing and planning of real estate subdivisions and developments; Real estate planning; Real estate surveys

Trade Mark:               

(‘the Trade Mark’)

1. The Trade Mark was examined as prescribed by section 31 of the Act and advertised as accepted for possible registration on 5 November 2015 in the Australian Official Journal of Trade Marks.

2. On 16 December 2015 REA Group Limited (‘the Opponent’) filed a Notice of Opposition to the registration of the Trade Mark.

3. Thereafter, on 18 December 2015, the Opponent filed a Statement of Grounds and Particulars which includes the ground under section 60 under which I will decide this matter.

4. On 20 January 2016, the Applicant filed a Notice of Intention to Defend.

5. Subsequently, the parties have filed Evidence in Support, Evidence in Answer, and Evidence in Reply which I will further discuss below.

6. Both parties have been advised of their right to be heard or to make written submissions.  The Opponent has filed written submissions by Corrs, Chambers, Westgarth.  The Applicant has filed written submissions made by Baxter IP, Patent Attorneys.

7. Now, in order that the Registrar of Trade Marks may discharge her obligation under section 55 of the Act to decide the matter, it has come before me, one of her delegates, for my decision.

Evidence

1. The evidence in this matter comprises the following declarations:

   Evidence in Support

   Sarah Turner, General Counsel and Company Secretary of the Opponent, made on 4 May 2016, with Exhibits 1 to 6;

   Evidence in Answer

   Scott John Law, sole director of the Applicant, with Exhibits SJL-1 to SJL-14;

   Evidence in Reply

   Silke Henning, Trade Mark Practitioner and Administrator at Corrs Chambers Westgarth, made on 17 October 2016, with Annexures SH-1 to SH-3.

2. I will discuss the evidence in this matter only insofar as it is relevant to my decision under section 60 of the Act.

The Opponent

1. The Opponent’s operations were summarised by Bromberg J in REA Group Ltd v Real Estate 1 Ltd:[1]

   [1] [2013] FCA 559; (2013) 217 FCR 327; (2013) 102 IPR 1 at [25].

   [The Opponent’s] property portal business commenced operation in 1998. Shortly thereafter the business changed the web address of its residential property portal to At that time the business was small, employing some 8 employees. Only about 40 of the 8,500 residential real estate agents in Australia listed their properties with [the Opponent] at that time.

   By 1999, [the Opponent] had listed on the Australian Stock Exchange and had 34 employees in Sydney, Melbourne and Brisbane. Over the following decade, [the Opponent’s] residential property portal business grew exponentially. By the end of 2002, it was the market leader in the Australian online real estate advertising market. Around that time, one in four real estate agents subscribed to the realestate.com.au property portal. By the end of the 2005 financial year, approximately 80% of all Australian real estate agents subscribed. By 2011, the proportion of real estate agents subscribing to [the Opponent’s] property portals had increased to approximately 95%.

   Online traffic to also increased exponentially over the same period. In June 2000, the website had approximately 150,000 users. In the month of June 2011, the realestate.com.au website had 6.7 million visits from unique browsers (ie 6.7 million different computers accessed the website). To give some context to the magnitude of use involved, this number exceeded the number of visits made by unique browsers in June 2011 to the websites of some of the most well-known daily metropolitan newspapers in Australia, such as The Age and The Australian. In the month of October 2011, the realestate.com.au website had visits from 6.8 million unique browsers and a total of over 16 million visits.

   Using methodology similar to that used to estimate television ratings, statistical information presented by [the Opponent] shows that in October 2011, the realestate.com.au website was visited by nearly twice as many people as its closest competitor and by more than six times as many people as its next closest competitor.

   Until about 2002, commercial property listings were intermingled with residential listings on “realestate.com.au”. In 2002, [the Opponent] launched the realcommercial.com.au portal promoting that business to medium sized commercial property agents and residential agents with some commercial listings. At that time, there were two large and successful dedicated commercial property portals. By 2005, the realcommercial.com.au business was the most popular commercial property portal in Australia. In May 2006, [the Opponent] acquired one of the other popular commercial real estate portals to consolidate its position as the leading commercial property portal in Australia. In the month of January 2005 some 72,000 unique browsers visited realcommercial.com.au, rising to nearly 400,000 visitors in the month of October 2011. In October 2011, visits to the realcommercial.com.au website were nearly four times the visits to the closest rival of [the Opponent] commercial real estate portal. At that time, there were some 1500 subscribing agents to the realcommercial.com.au property portal.

   In June 2007, [the Opponent] launched a holiday rental website known as “realholiday.com.au”. That website was sold in April 2011 and renamed. [The Opponent] also operates a website which lists businesses for sale known as “realbusinesses.com.au”.

   [The Opponent] various portals refer to each other and contain hyperlinks so that an internet user may conveniently move from one site to the other.

   There can be, and there was no issue, that [the Opponent’s] residential and commercial real estate portals are popular sites with consumers and are extensively used by consumers to search for properties.

   Given the popularity and market dominance of [the Opponent’s] real estate portals, its branding has become relatively well known. The branding of a product facilitates a reputational connection between the consumer or potential consumer of a product and the product’s producer or provider. Brand recognition by consumers demonstrates an association in the minds of the consumer between the product and its provider or at least between the product and its brand. Some brands will focus on the identity of the provider others will not. Whether focused upon the owner’s name or the owner’s trading name for the product concerned, a brand enables an owner to establish a relationship between the consumer and the owner or between the consumer and the owner’s product or perhaps both.

   A brand may be comprised of a number of brand elements such as a name, a logo and the use of a particular colour. In the case of [the Opponent’s] residential property portal, there are four main brand elements utilised:

   (a) the name “realestate.com.au” in lower case sans serif font;

   (b) the silhouette of a house[2] inside a button on a red background;

   [2] I observe that this pictorial device may also be seen as an upwards pointing arrow.

   (c) the colour red as the background colour on the website; and

   (d) the use of a tagline (which has varied from time to time) such as “Australia’s No 1 property site”.

   The main brand elements (excluding the red background) are depicted in the following logo (“the realestate.com.au logo”):

(‘the House Trade Mark’)

Bromberg J subsequently observes:[3]

In the 2010-2011 financial year, the “realestate.com.au” website received more than 10 million ‘clicks’ from sponsored links or paid search results. Compared to the 2008-2009 financial year, [the Opponent] doubled its expenditure on pay per click advertising and nearly tripled the total number of ‘clicks’ to the realestate.com.au website. A similar increase in both the cost of advertising and total number of ‘clicks’ was experienced for the realcommercial.com.au portal, which in the 2010-2011 year generated nearly 850,000 ‘clicks’ through pay per click sponsored links.

[The Opponent’s] promotional activities include electronic marketing for consumers who have opted to receive ‘email alerts’. As at January 2011 in excess of 1.7 million users were registered for email alerts via the realestate.com.au portal and almost 100,000 users were registered for email alerts via the realcommercial.com.au portal. Those users were sent in excess of 18 million emails in that month. Additionally, [the Opponent] markets directly to the real estate industry, including by sending promotional material to real estate agents to provide to clients and by sponsoring industry events.

To promote and drive traffic to its websites, [the Opponent] has also entered into various syndication agreements with owners of other popular websites. For instance, [the Opponent] has a syndication agreement with eBay. Users of that website who navigate to eBay’s real estate or property section are taken to a co-branded webpage which displays both eBay’s name and logo alongside the “realestate.com.au” name and logo. Typically a syndication partner is paid for each unique browser that is directed to the realestate.com.au site from the syndication partner’s site. Since 2006, [the Opponent] has spent over $4.7m on syndication arrangements.

[3] At [48].

1. I will add that the Opponent has also used, since about February 2002, the trade mark that appears below, which described in the following terms by Bromberg J:[4]

   In the case of [the Opponent’s] commercial property portal, there are also four main brand elements utilised:

   (a) the name “realcommercial.com.au” in lower case sans serif font;

   (b) a silhouette of commercial buildings inside a button on a blue background;

   (c) the colour blue as the background colour on the website; and

   (d) a tagline which often accompanies the other elements such as “Australia’s No 1 commercial property site”.

   The main brand elements (without the blue background) are depicted in the following logo:

(‘the Opponent’s RealCommercial Trade Mark’)

[4] [37].

1. As an indication of the scope of the Opponent’s promotional activities under its trade marks, I note the comment of Bromberg J:[5]

   [The Opponent’s] promotional activities include electronic marketing for consumers who have opted to receive ‘email alerts’. As at January 2011 in excess of 1.7 million users were registered for email alerts via the realestate.com.au portal and almost 100,000 users were registered for email alerts via the realcommercial.com.au portal. Those users were sent in excess of 18 million emails in that month. Additionally, [the Opponent] markets directly to the real estate industry, including by sending promotional material to real estate agents to provide to clients and by sponsoring industry events.

   [5] Ibid at [49].

The Applicant

1. Ms Turner’s declaration establishes that there have been dealings between the parties concerning a real estate website operated by the Applicant under the trade mark which appears below:

(‘the Dots Trade Mark’)

1. Following a ‘cease and desist’ letter from the Opponent, the Applicant made application to register the Trade Mark.  I also note that Ms Henning’s declaration establishes that as at 4 October 2015 the Dots Trade Mark was still in use by the Applicant in relation to real estate services as was the trade mark that appears below:

(‘the Blue Dots Trade Mark’)

Onus and Relevant Date

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[6]

   [6] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]- [133].

2. The relevant date the ground under section 60 must be considered at is the priority date of the opposed application which here is the same as the filing date – 17 June 2015.

Section 60

Ground and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

   The Opponent has, and had at the Priority Date of the Application, acquired a substantial reputation in Australia in its marks the subject of the REA Trade Mark Registrations and similar unregistered trade marks, including:

   realestate.com.au

   (these marks, together with the REA Trade Mark Applications and Registrations are referred to collectively herein as the REA Trade Marks).

   The [Trade Mark] is visually and phonetically similar to the Opponent's extremely reputed REA Trade Marks such that the likelihood of direct and indirect confusion through use of the Applicant's Mark is inevitable. That likelihood of confusion is as a result of the Opponent's reputation, and is reinforced by the identity between the respective services.

   Finally, the Opponent has a well-established and reputed service under the REA Trade Marks (and related trade marks) in respect of the Asian market.

   As a result of the combination of factors here, namely:

   (a) the reputation of the Opponent in the REA Trade Marks;

   (b) the stand-alone and combined reputation of the Opponent in the Button logo and the mark realestate.com.au;

   (c) the Opponent's use of and reputation in the REA Trade Marks in respect of the Asian market in respect of the Opponent's Services,

   consumers are likely to be caused to wonder whether the [Trade Mark] is part of the Opponent's business offering that relates to its Asian portal.

   This is further supported by the findings of Bromberg J in REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559 (7 June 2013) that:

   • the realestate.com.au trade mark had become (in its own right) "distinctive of its property portal business" (at (110)); and

   • "secondary meaning has been established in the [term] "realestate.com.au" ... and that a significant number of consumers associate [this term] with REA's online property portal [business]' (at (115)).

Legal Background

1. Section 60 of the Act provides:

   60Trade mark similar to trade mark that has acquired a reputation in Australia

   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.

   Note:For priority date see section 12.

2. Therefore, to found a ground under section 60 of the Act it is incumbent upon an opponent to establish that at the priority date of the opposed application:

   1.The trade mark upon which it relies had a reputation such that

   2.the use of the opposed trade mark would be likely to confuse or deceive.

Reputation

1. In McCormick & Co Inc v McCormick[7] (‘McCormick’) Kenny J asked:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   [7] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].

2. In Le Cordon Bleu B.V. v Cordon Bleu International Ltee[8] Heerey J said that the reputation required to be demonstrated (albeit in relation to section 28(a) of the repealed Trade Marks Act 1955)[9] was to be:

   ... one of which a significant number of persons were aware...What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

   (Implicitly approved by the Full Federal Court (Moore, Tamberlin and Goldberg JJ) on appeal in Renaud Cointreau & Cie v Cordon Bleu International Ltee). ^[10]

   [8] [2000] FCA 1587; (2000) 50 IPR 1.

   [9] The word ‘reputation’ was not used in subparagraph 28(a) of the superseded Act. All that was required for subparagraph 28(a) was that use of the mark “be likely to deceive or cause confusion” and Heerey J imported the word “reputation” into his quoted remarks because he was following Gummow J’s judgment in Johnson & Johnson v Kalnin [1993] FCA 210; (1993) 26 IPR 435 at 438.

   [10] [2001] FCA 1170; (2001) 52 IPR 382 at [71] to [76].

1. Regarding the measurement of reputation, in McCormick Her Honour went on to state:[11]

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

   [11] Op cit at [86].

2. It is convenient to focus on the reputation of the House Trade Mark as that trade mark is central to my reasoning in this matter.

3. The House Trade Mark upon which, inter alia, the Opponent relies had a reputation at the priority date.  While it is unnecessary in the present circumstances to characterise the extent of that reputation, it was obviously considerable at the priority date and ‘well-recognised by the public generally’.

Likelihood of Confusion or Deception

1. The assessment of the likelihood of deception or confusion is moderated by the factors discussed by French J in Registrar of Trade Marks v Woolworths.[12] Absent any requirement under section 60 that the trade marks under consideration be deceptively similar, these factors are:

   [12] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [50].

   (i) […] it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question […] must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   "...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

2. The terms ‘deception’ and ‘confusion’ refer to two different mental states.  The differences between ‘deception’ and ‘confusion’ were explained by Richardson J in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd:[13]

   ‘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.

   [13] [1979] RPC 410 at 423.

3. Additionally, as Rich J said in Radio Corporation Pty Ltd v Disney:[14]

   In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney.” The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney.” This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion.[15] It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.

   [14] 1937] HCA 38; (1937) 57 CLR 448.

   [15] I note that the onus is now on the Opponent to establish the likelihood of deception or confusion.

4. The likelihood of ‘confusion’ may be held to exist even if it does not persist to the point of sale.  In Tivo Inc v Vivo International Corporation Pty Ltd[16] Dodds-Streeton J observed at [105]:

   It is well established that trade marks may be deceptively similar for the purposes of ss 44(1) and (2) of the Act even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale.

   [16] [2012] FCA 252 at [105].

5. While there is no requirement under section 60 that the trade marks in question be ‘deceptively similar’, the above principle applies to ‘confusion’ in considerations under section 60 of the Act.

Submissions

1. The Opponent submits:

   The presentation of the Opposed Mark is entirely compatible with the Opponent’s branding. In light of the parties’ history of dealings, it is clear that the Applicant was, at the time of filing the Opposed Application, aware of the Opponent’s use of and reputation in the realestate.com.au Logo. The Applicant adopted the Opposed Mark with knowledge of, and a desire to exploit the commercial appeal of, the Opponent’s realestate.com.au Logo.

   It is reasonable to infer that, in formulating as an alternative to  , the Applicant intended to address the immediate concerns raised by the Opponent while still conveying to its predominantly Asian consumer base the impression that its business was related to the business operated by the Opponent.

   Based on the totality of the evidence, it is open to the Hearing Officer to conclude that the Applicant filed the Opposed Application with the intention of using the Opposed Mark in a manner which would cause consumers seeking access to the Applicant’s services to mistakenly associate the Applicant or its realestateasia.com.au trade marks with the Opponent or its realestate.com.au trade marks.

2. The Applicant submits:

   [The] Applicant’s evidence in answer shows:

   ·The common use of red in the real estate business

   ·The common use of house logos in the real estate business

   ·The common use of button logos in the real estate business

   ·The common use of the words realestate marks [sic] used in the real estate business

   ·The common use of .com.au in marks used in the real estate business

3. The Applicant also submits that in comparing the trade marks of the parties the following points in the table below are applicable:

Components of the mark	Included in REA Group mark?	Owner ship by REA?	Why?
Red colour	yes	NO	Not distinctive or idiosyncratic
Circle	yes	NO	other traders might wish to use
Skyscraper	yes	NO	other traders might wish to use
Red colour Circle with Skyscraper	NO	NO	REA have NO registration or ownership
realestate	yes	NO	other traders might wish to use
Red colour Circle with Skyscraper with word realestate	NO	NO	REA have NO registration or ownership
realestateasia.com.au	NO	NO	Not same as realestate.com.au as Court case on realestate1.com.au only extended to single letter or single number difference
Australia’s first 18 real estate property portal	NO	NO	REA have NO registration or ownership
Entire combination of all of the above	NO	NO	REA have NO registration or ownership

Consideration

1. In my consideration, it is quite unlikely that, when seeking to avail themselves of real estate services, consumers will have the trade marks of the parties before them for the kind of detailed analysis suggested by the Applicant.  Rather, the question is to be addressed by a consideration of the impression formed by the trade marks in question.  Moore, Sackville and Emmett JJ in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd observed (albeit in relation to section 44 of the Act):

   The comparison made is between, on the one hand, the impression based on recollection of the applicant’s mark that persons of ordinary intelligence and memory would have, and, on the other hand, the impressions that such persons would get from the respondent’s mark. The idea which the mark will naturally suggest to the mind of the person who sees it, will be an important consideration. The effect of spoken description must also be considered so that similarities of both sound and meaning may be important. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold, provides the setting and the habits and observations of ordinary people affords the standard.

2. I return to the observations of Bromberg J, above, concerning the general impression of the House Trade Mark which has:

   (a) the name “realestate.com.au” in lower case sans serif font;

   (b) the silhouette of a house inside a button on a red background;

   (c) the colour red as the background colour on the website; and

   (d) the use of a tagline (which has varied from time to time) such as “Australia’s No 1 property site”.

3. The Trade Mark is composed of:

   (a)   The name “realestateasia.com.au in lower case sans serif font;

   (b)   The silhouette of skyscrapers inside a button on a red background;

   (c)   The use of a tagline starting with the word ‘Australia’ and incorporating a numeral.

4. Further, I note that the elements that form the Trade Mark are in the exact orientation, positioning, and colours, of the similar elements within the House Trade Mark and that the skyscraper element within the Trade Mark retains the impression of having an upwards point and appears to be adapted from that within the Opponent’s RealCommercial Trade Mark.

5. It matters not that the individual elements of a trade mark under comparison may lack inherent distinctiveness if they combine to form an inherently adapted whole; if they do so, the comparison becomes one of the impressions formed by the wholes, rather than a detailed analysis of such differences that might exist between those trade marks.

6. The Opponent submits:

   The oft-quoted test for confusion can be applied to the present case as follows: on the basis of the reputation in the [House Trade Mark] as at the Relevant Date, is it likely that the Applicant’s use of the [Trade] Mark (in the notional “fair and normal use” context) in relation to the [claimed services] would cause a substantial number of persons in the market for the [claimed services] to wonder whether [claimed services] offered or provided by reference to the [Trade] Mark come from the same source as services marketed by reference to the realestate.com.au Logo?

7. Having regard to the reputation of the House Trade Mark at the relevant date and the close thematic and physical similarities between it and the Trade Mark, I am satisfied that the use of the Trade Mark would be likely to deceive or cause confusion.

8. The Opponent has established its ground under section 60.

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (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.

   Note:For limitations see section 6.

2. As the ground under section 60 has been established it is appropriate that the Registrar refuses to register the Trade Mark which, as one of her delegates, I now do.

Costs

1. Both parties requested their costs in the event that they were successful in this matter; as the Opponent has established its opposition to registration it is appropriate that I award costs against the Applicant at the scale set out in Schedule 8 to the Trade Marks Regulations 1995.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
6 April 2018