REA Group Ltd v Real Estate 1 Ltd

FEDERAL COURT OF AUSTRALIA

REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559

Citation:

REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559

Parties:

REA GROUP LTD (ACN 068 349 066) and REALESTATE.COM.AU PTY LIMITED (ACN 080 195 535) v REAL ESTATE 1 LTD (ACN 140 715 028), SIXTEEN BLAMEY PTY LTD (ACN 130 053 271), GEOFFREY LUFF, JULIE LUFF, CHRISTIAN ONGARELLO and BIANCA ONGARELLO

File number:

VID 900 of 2010

Judge:

BROMBERG J

Date of judgment:

7 June 2013

Catchwords:

TRADE PRACTICES – misleading and deceptive conduct – use of similar domain and trading names by rival internet businesses – identification of class of affected consumers and the characteristics to be attributed to the ordinary or reasonable consumer of online property portals – whether secondary meaning in its name was established by the applicant – principles applicable to establishing secondary meaning for descriptive as opposed to concocted names discussed – extent of attention to be paid to “.com.au” when comparison is made of similar names – causation and the extent of differentiation from a descriptive name required to avoid finding of likely deception – whether consumer using an internet search engine would be likely misled or deceived by use of the respondent’s domain name on a search results page – whether consumer would likely assume that an organic search result or sponsored link for the respondent’s business is a link for the applicant’s business or a business associated with the applicant – whether sufficient nexus between conduct of respondent and any likely misconception or deception – whether a not insubstantial number of consumers were likely to have been misled or deceived – whether any likely deception was transitory and commercially insignificant – relevance of any intent of the respondent to take advantage of applicant’s reputation.

TRADE MARKS – use of similar domain and trading names by rival internet businesses – whether respondent’s mark deceptively similar to applicant’s mark – whether use of respondent’s mark in a logo was the use of a mark that was deceptively similar to the essential features of the applicant’s trade mark – whether respondent’s use of a mark as a trading name on a search engine results page was the use of a mark that was deceptively similar to the applicant’s trade mark – whether the respondent’s use of a mark as a domain name on a search engine results page was the use of a mark that was deceptively similar to the applicant’s trade mark – attention to be given to “.com.au” when considering deceptive similarity – whether individual respondents liable with corporate respondents as joint tortfeasors.

Legislation:

Competition and Consumer Act 2010 (Cth)
Trade Practices Act 1974 (Cth) ss 52, 53, 53(c), 53(d)
Trade Practices Amendment (Australian Consumer Law) Act (No 2) 2010 (Cth)
Trade Marks Act 1995 (Cth) ss 10, 120, 120(1)

Cases cited:

Google Inc v Australian Competition and Consumer Commission (2013) 294 ALR 404
Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982)…