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

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.