REA Group Limited v Realestateasia.com.au Pty Limited

REA Group Limited (the Opponent) opposed the registration of a trade mark by Realestateasia.com.au Pty Limited (the Applicant). The dispute concerned the Applicant's proposed trade mark, which the Opponent argued would be likely to deceive or cause confusion under section 60 of the *Trade Marks Act 1995* (Cth) due to the Opponent's extensive use and reputation in its own trade marks, particularly "realestate.com.au". The decision was made by a delegate of the Registrar of Trade Marks.

The primary legal issue before the court was whether the Applicant's proposed trade mark was likely to deceive or cause confusion within the meaning of section 60 of the *Trade Marks Act 1995*. This required an assessment of the extent of the Opponent's reputation and the degree of similarity between the respective trade marks and the goods or services for which they were to be registered.

The court found that the Opponent had established a significant reputation and market dominance in the Australian online real estate advertising market through its "realestate.com.au" and "realcommercial.com.au" portals. The evidence demonstrated exponential growth in user traffic and agent subscriptions for these portals from 1998 onwards, establishing them as leading platforms. The court considered the brand elements of the Opponent's residential property portal, including its name, logo, and use of the colour red, noting that these elements facilitated a reputational connection with consumers. Given this established reputation, the court concluded that the Applicant's proposed trade mark was likely to deceive or cause confusion.

Consequently, the Registrar's delegate refused to register the Applicant's trade mark. The Applicant was also ordered to pay the Opponent's costs.