REA Group Ltd v Real Estate 1 Ltd (No 2) [2013] FCA 968

The Court found the first and second respondents infringed the applicants' registered trade marks by using 'realestate1.com.au' and 'realcommercial1.com.au' as domain names and marks for online real estate advertising services, and granted specific declaratory and injunctive relief, including transfer of domain names. Due to the mixed success (failure on misleading/deceptive conduct, passing off, and accessory liability claims), the applicants were awarded 70% of their costs. The injunctions were limited to restraining use of the specific marks found to be infringing, rather than broader statutory language covering similar marks.

Parties: First Applicant: REA Group Ltd; Second Applicant: Realestate.com.au Pty Limited; First Respondent: Real Estate 1 Ltd; Second Respondent: Sixteen Blamey Pty Ltd; Third Respondent: Geoffrey Luff; Fourth Respondent: Julie Luff; Fifth Respondent: Christian Ongarello; Sixth Respondent: Bianca Ongarello
Jurisdiction: Australia
Judgment Date: 26 September 2013
Procedural Posture: Trade Mark Infringement and Associated Relief in the Federal Court of Australia / Post Trial Orders on Relief and Costs
Outcome: Declarations of trade mark infringement and orders for transfer of infringing domain names and permanent injunctions against first and second respondents. Costs apportioned, with first and second respondents to pay 70% of applicants' costs; no order as to costs in respect of third to sixth respondents; other parts...
Legal Topics: Trade Mark Infringement, Remedies, Injunctions, Declaratory Relief, Transfer of Domain Names, Costs Apportionment, Passing Off, Misleading or Deceptive Conduct

Intellectual Property Trade Marks Law Trade Mark Infringement Remedies Injunctions Declaratory Relief Transfer of Domain Names Costs Apportionment +2 more

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Parties

REA Group Ltd

First Applicant

Realestate.com.au Pty Limited

Second Applicant

Real Estate 1 Ltd

First Respondent

Sixteen Blamey Pty Ltd

Second Respondent

Geoffrey Luff

Third Respondent

Julie Luff

Fourth Respondent

Christian Ongarello

Fifth Respondent

Bianca Ongarello

Sixth Respondent

Procedural Posture

Trade Mark Infringement and Associated Relief in the Federal Court of Australia / Post Trial Orders on Relief and Costs

Legal Issues

1 Whether the first and second respondents infringed the applicants' registered trade marks by using similar marks in domain names and advertising for online real estate services
2 Whether declaratory relief should be granted when infringing conduct stopped before proceedings started
3 Whether orders should require transfer of infringing domain names to the applicant

Ratio Decidendi

Court Disposition

Declarations of trade mark infringement and orders for transfer of infringing domain names and permanent injunctions against first and second respondents. Costs apportioned, with first and second respondents to pay 70% of applicants' costs; no order as to costs in respect of third to sixth respondents; other parts...

Orders

Declarations of infringement of trade marks no. 811931, 1075935 and 933123 by first and second respondents using 'realestate1.com.au' and 'realcommercial1.com.au'
Order for first and second respondents to transfer domain names 'www.realestate1.com.au' and 'www.realcommercial1.com.au' to first applicant within 30 days