The battle of trademarks (realestate.com.au vs realestate1.com.au) ended yesterday, 7 June 2013, with The Hon. Justice J Broomberg ruling in favour of the realestate.com.au on the subject of Trademark Infringement.
In the judgement paper Justice Broomberg says,”I have found that by using the marks realestate1.com.au and realcommercial1.com.au, Real Estate 1 infringed REA’s trade marks in all but one of the different uses alleged by REA. Otherwise, REA’s claims expounded at trial have failed.”
Other claims by realestate.com.au included Trade Practices infringements.
“As my conclusions demonstrate, registration of REA’s realestate.com.au marks has effectively given REA a monopoly over two highly descriptive terms when used in combination. Those terms are likely to be the most common terms on a search results page where a search has been conducted for a residential real estate portal. The protection conferred by REA’s trade marks over the use of “realestate” and “.com.au” in combination, provides REA with a monopoly over the term “realestate” in circumstances where its rivals seeking also to use “realestate” or a close variant thereof as a second-level domain, do not forego the advantages of using “.com.au” in their domain names. The natural advantage of a domain name which incorporates “realestate” to the commercial success of property portals will be apparent from observations I have already made. There is also a natural advantage in the use of the suffix “.com.au”.
The judgement also goes on to say:
“It is troubling that terms that are highly descriptive of a particular area of commerce and which provide significant commercial advantage should not be readily available for use by all who seek to participate in that commerce. However, in the absence of a successful challenge to the registration of REA’s realestate.com.au trade marks, whilst that may be troubling, REA is nevertheless entitled to the protection of the monopoly which has been conferred upon it.”
The initial stoush between the two companies dates back to 2007, when realestate1.net.au (later realestate1.com.au) and realcommercial1.com.au registered the aforementioned domain names and commenced advertising properties.
In 2012, realestate.com.au requested that realestate1.com.au cancel its domain name, claiming it to be too similar to it’s own and a cause for customer confusion. Realestate1.com.au refused stating their business was significantly different, and when mediations broke the Federal Court hearing commenced in Melbourne between the 11 and 18 April 2012.
Damages were not the subject of this trial and may now be determined in a separate hearing. Comments have not been sought from either party at this stage.