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Tuesday, July 28, 2015

Does my domain name infringe a registered trade mark?

By Tim Golder, Partner, Sarah Matheson, Partner, and Grace Walton, Vacation Clerk


A recent 650-paragraph judgment presents a smorgasbord of trade mark law issues with some consumer law for dessert. Perhaps suffering from indigestion, his Honour commented on the disproportionate amount of resources expended on this dispute. To save our Scintilla readers from the same fate, we have focused on selected issues below.


The facts


Cairns Harbour Lights Pty Ltd (CHL) was the developer of an apartment building in Cairns known as 'Cairns Harbour Lights' or 'Harbour Lights'. Some apartments were let on a short-term basis.

In 2009 CHL applied to register two word marks: HARBOUR LIGHTS and CAIRNS HARBOUR LIGHTS in relation to 'commercial real estate agency services', 'hotel services' and 'leasing, letting and rental services'. Registration was granted.

Apartment owners were free to use any letting agent, but CHL granted Accor exclusive rights to operate a letting service on-site, and an exclusive licence to use the trade marks.

In 2007, an apartment owner started her own letting agency using 'Harbour Lights' and 'Cairns Harbour Lights', and later sold her business to one of the respondents, Liv Pty Ltd (Liv).

The CHL and Accor sued the apartment owner and  Liv (and its director) for trade mark infringement and misleading and deceptive conduct. The respondents cross-claimed that CHL was not the owner of the trade marks and sought rectification of the Trade Marks Register.


In brief


The respondents succeeded in the rectification claim with respect to CAIRNS HARBOUR LIGHTS mark for all services, and with respect to HARBOUR LIGHTS other than for 'commercial real estate services' and 'hotel services'.

CHL and Accor succeeded on infringement in relation what was left of the trade marks, and (on a limited basis) in the misleading and deceptive conduct claim.

Read on for the detail …


Rectification


If a mark has not been used prior to filing, the registrant is deemed to be the owner. If a mark has been used prior to filing, the owner is the party who first uses the mark for relevant goods/services.

Both sides had challenges in that they had variously used the relevant words in a merely descriptive sense, but not 'as a trade mark', and had not necessarily used exactly the same words as the registered trade marks.

However, both sides had used the marks in their respective domain names, resolving to their respective websites where various services were offered. Adopting an analogy between a domain name directing people to a site and a sign on a shop front, Justice Rangiah followed previous cases (here and here) finding that if a registered domain name resolves to a website that promotes goods or services, that will be use as a trade mark in relation to those goods or services. Other uses had been made in other marketing materials. Some uses were held to be merely descriptive of the property – ie merely using its name as an identifier – but other uses were held to be trade mark use in respect of relevant services.

The respondents were able to show first use in respect of the majority of services the subject of the registrations. Accordingly, the CAIRNS HARBOUR LIGHTS registration was limited to certain services – 'commercial real estate services' and 'hotel services'. The registration for CAIRNS HARBOUR LIGHTS was held to be totally invalid, on the basis that that particular mark was insufficiently distinctive.


Infringement


For the services that remained validly registered, the respondents were held to have infringed. Most interestingly, infringement was held to extend to the appearance of the trade mark in Google search results (not just sponsored links). His Honour held that the respondents had caused an infringing statement to appear in the search results, and that constituted infringing trade mark use by those respondents.


Misleading and deceptive conduct


Accor gave evidence that people who had booked through the respondents' business would often show up at Accor's reception desk, trying to check-in, or requesting use of services Accor provided to its guests such as room service, pool towels, onsite luggage storage and newspapers. His Honour found, however, that that was not a consequence of misleading and deceptive conduct by the respondents, save to the extent that the respondents had included listings on various websites such as HotelClub.com and Expedia.com.au, which contained references to 'Hotel Policies', 'Hotel Features' or 'In the Hotel'. Those listings were found to be misleading and deceptive because they represented to customers that they were booking a hotel room (which in turn led to the expectation of a reception desk, room service and so on) when really they were booking an apartment.


Conclusion


The case is a reminder that use of a domain name which resolves to a website promoting the user's goods or services will probably amount to trade mark use.

The case is also a timely reminder of the benefits of filing a trade mark application before one commences relevant use – in this case use by a third party before the filing date, and before the first use by the applicant, caused the marks to be removed from the register for some services.

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