Backlash From Industry As “realestate.com.au” Trade Mark Accepted

Wednesday 20 August 2014 @ 11.32 a.m. | IP & Media

Another trade mark battle could be on the horizon, with REA Group’s move to trade mark the URL realestate.com.au being strongly criticised by industry lobby group Real Estate Institute of Australia (REIA).  The REA Group already holds a number of composite trade marks for the URL combined with its house/arrow logo, and has a history of defending trade marks through litigation.

Last year, it won a Federal Court case (REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559) against a group using “realestate1.com.au” as a domain name address.  The Federal Court found that the domain name was “deceptively similar” to realestate.com.au and infringed the REA Group’s marks.

The REA Group lodged an application for a word only trade mark for “realestate.com.au” in April 2012.  The application is for goods and services under class 35 (“Advertising of real estate property services provided through a web portal”) and class 36 (“Real estate property services provided through a web portal”).  The application was advertised as accepted by IP Australia in June this year, and is appears to be currently under challenge by ABCRealEstate.com.au Pty Ltd.

REIA President Peter Bushby told SmartCompany that the term appears to be “generic and describes the entire industry”, saying:

“REA once again appears to be making a technical grab for control of those things that belong to the industry at large… It has in the past tried to prohibit others from using the words ‘real estate’ in their domain names.” 

He pointed to ABS data that shows “as at June 2013, there were 35,019 real estate businesses operating in Australia” and said:

“[a] substantial proportion of those businesses use the phrase “real estate” as part of their branding to assist consumers to identify the industry and range of services that those business provide”.

John MacPhail from Finlaysons also told SmartCompany that companies don’t usually need to trade mark their URLs  as “they just don’t need that kind of monopoly because they already own the domain name”, but noted that:

“REA Group would have been required to present substantial evidence to IP Australia that consumers and other businesses clearly link the words realestate.com.au with REA Group’s service”.

On Friday, SmartCompany also reported that a similar case could arise in the case of “property.com.au”, which is connected to “realestate.com.au”, which has also been applied for by the REA Group.  According to a spokesperson for the Group, there are “no plans to progress” the application, which has not been accepted by IP Australia.

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