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

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

The applicants failed to establish that the respondents' use of 'realestate1.com.au' (in URLs and as a trading name) was misleading or deceptive under s 52 of the Trade Practices Act 1974 (Cth) or passing off, as any similarity was insufficient to mislead or deceive a not insubstantial number of reasonable consumers, and any potential confusion was fleeting and commercially insignificant. However, the respondents infringed the applicants' registered trade marks (except one logo use) by using marks that were deceptively similar, particularly 'realcommercial1.com.au', as assessed under Trade Marks Act 1995 (Cth) s 120(1). No accessorial liability was found against individual respondents.

Parties
First Applicant: REA Group Ltd (ACN 068 349 066); Second Applicant: Realestate.com.au Pty Limited (ACN 080 195 535); First Respondent: Real Estate 1 Ltd (ACN 140 715 028); Second Respondent: Sixteen Blamey Pty Ltd (ACN 130 053 271); Third Respondent: Geoffrey Luff; Fourth Respondent: Julie Luff; Fifth Respondent: Christian Ongarello; Sixth Respondent: Bianca Ongarello
Jurisdiction
Australia
Judgment Date
07 June 2013
Procedural Posture
Civil / Judgment on Liability and Directions for Further Relief/damages
Outcome
Applicants succeeded in part—trade mark infringement found (except one logo use); misleading or deceptive conduct and passing off claims dismissed; accessorial liability against individuals dismissed; directions made for further submissions and hearing on relief and damages.
Legal Topics
Misleading and Deceptive Conduct, Trade Marks, Passing Off, Domain Names, Online Business Practices
Intellectual Property Competition and Consumer Law Misleading and Deceptive Conduct Trade Marks Passing Off Domain Names Online Business Practices

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Parties

REA Group Ltd (ACN 068 349 066)

First Applicant

Realestate.com.au Pty Limited (ACN 080 195 535)

Second Applicant

Real Estate 1 Ltd (ACN 140 715 028)

First Respondent

Sixteen Blamey Pty Ltd (ACN 130 053 271)

Second Respondent

Geoffrey Luff

Third Respondent

Julie Luff

Fourth Respondent

Christian Ongarello

Fifth Respondent

Bianca Ongarello

Sixth Respondent

Procedural Posture

Civil / Judgment on Liability and Directions for Further Relief/damages

Legal Issues

  1. 1 Whether respondents' use of similar domain names and trading names amounts to misleading or deceptive conduct under Trade Practices Act 1974 (Cth) s 52
  2. 2 Whether conduct constituted passing off
  3. 3 Whether respondents' use of marks infringed applicants' trade marks under Trade Marks Act 1995 (Cth) s 120(1)

Ratio Decidendi

The applicants failed to establish that the respondents' use of 'realestate1.com.au' (in URLs and as a trading name) was misleading or deceptive under s 52 of the Trade Practices Act 1974 (Cth) or passing off, as any similarity was insufficient to mislead or deceive a not insubstantial number of reasonable consumers, and any potential confusion was fleeting and commercially insignificant. However, the respondents infringed the applicants' registered trade marks (except one logo use) by using marks that were deceptively similar, particularly 'realcommercial1.com.au', as assessed under Trade Marks Act 1995 (Cth) s 120(1). No accessorial liability was found against individual respondents.

Court Disposition

Applicants succeeded in part—trade mark infringement found (except one logo use); misleading or deceptive conduct and passing off claims dismissed; accessorial liability against individuals dismissed; directions made for further submissions and hearing on relief and damages.

Orders

  • Parties to confer and bring in short minutes of orders dealing with submissions as to extent and form of relief to be granted consequent upon findings, and steps to facilitate further hearing as to damages.