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In The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd [2023] FCA 482, the Court looked at a claim of trade mark infringement of two real estate companies and, as part of this, the Court considered the question of what constituted “use” of a trade mark. An interesting takeaway is that, depending on the specific factual circumstances, businesses could potentially be found liable for trade mark infringement by adopting the wrong e-mail address, website URL, Facebook name, or Instagram handle.

So, what were the particulars of this case and what should owners consider when branding their business for the first time?

The players

The Agency Group Australia Limited (The Agency Group) is a real estate business that offers a suite of services to its clients. Through its wholly-owned subsidiary Ausnet, it is the registered owner of the following Australian trade marks in class 36 (insurance, financial and real estate services):

Registration No: 1836914, Priority Date 6 April 2017 (Agency Mark)

Registration No: 1877216, Priority Date 2 October 2017 (Logo mark)

The Agency Group and its subsidiaries issued proceedings in the Federal Court of Australia against H.A.S Real Estate (H.A.S), who operate a real estate business located in Dee Why, in the Northern Beaches region of Sydney, which the Agency Group claims is close to their offices located in Manly, Neutral Bay and Lindfield.

H.A.S Real Estate is not the owner of any registered trade marks, however has advertised its business as “The North Agency”, on their website, Instagram, and realestate.com.au. H.A.S Real Estate has also used the following logo in the promotion of their business:

(N Logo)

The claims

The Agency Group claimed that H.A.S Real Estate and its subsidiaries were in contravention of the Trade Marks Act 1995 (Cth) (the Trade Marks Act) and s 18 of the Australian Consumer Law, being Sch 2 to the Competition and Consumer Act 2010 (Cth) (the ACL), and, more specifically, that they have:

• infringed registered trade marks pursuant to s 120(1) of the Trade Marks Act;
• engaged in conduct that is misleading or deceptive or likely to mislead or deceive in contravention of the ACL (ACL);
• made false or misleading representations in contravention of s 29(1)(g), (h) and (k) of the ACL to the effect that:
  • A.S. Real Estate real estate agency services have the sponsorship or approval of the applicants; and/or
  • A.S. Real Estate has the sponsorship or approval, or an affiliation with, the applicants; and
• passed off the real estate agency services of H.A.S. Real Estate as being connected or associated with the applicants or their services.

Below is a useful comparison table to understand the advertising and marketing of both businesses.

Can a domain name, Facebook name or an Instagram handle constitute “use” of a trade mark?

Unlike The Agency Group, H.A.S did not have a registered trade mark with IP Australia (on 17 March 2023, H.A.S filed for the word mark “North”). Accordingly, a live threshold issue that needed to be established was whether there was even any “use” of the trade marks by H.A.S. Use as a trade mark under s 17 of the Trade Marks Act is defined as being used to distinguish the goods or services dealt with by one trader from the goods or services dealt with by other trades.

The Court found that it was clear on the facts that the “THE NORTH AGENCY” and the N Logo were used as trade marks by H.A.S on its website, on realestate.com.au, on domain.com.au, at its physical office, on signage, brochures and printed materials.

Of particular interest is that the Court also found that use of “thenorthagency” as the website URL, Facebook account, email addresses and “the.north.agency” in the Instagram account, constituted use by H.A.S as a trade mark. In setting out its finding that a domain name, Facebook name or an Instagram handle can constitute “use” of a trade mark, the Court referred to the principles of Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235 and Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808.

The Court’s rationale for the domain name constituting “use” of a trademark is that a customer is likely to view a website URL as a “virtual reality storefront offering the relevant goods for sale”, rather than a mere descriptive tool to identify the website. In this present case, it was relevant that H.A.S had used the domain name in its promotional material to direct and attract customers to H.A.S website.

The Court also referred to the authorities to note the addition of “www” and “com.au” as a prefix and suffix would not substantially affect the identity of the trade mark pursuant to section 7(1) of the Trade Marks Act.

Further, the Court referred to the High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 to set out that the word “agency” whilst descriptive, does not necessarily mean that the sign is not a trade mark.

What factors did the Court consider when determining a trade mark infringement?

Ultimately, the Court decided that there was not any trade mark infringement or breach of the ACL on the facts.

The insertion of the word “NORTH” in the mark “THE NORTH AGENCY”, which was often larger and more prominent than the word AGENCY, is a striking, and substantial differentiating feature from the AGENCY mark which would remain in the minds of ordinary consumers with imperfect recollection. The addition of “NORTH” is not merely a reference to a geographical location, but also serves to distinguish a competing provider of real estate services.

When “THE NORTH AGENCY” is spoken aloud, the stress would naturally fall on the word “NORTH” at least as much as the word “AGENCY” which serves to emphasise the distinctive feature of the name. Further, the ordinary consumer would expect the word “agency” to be commonly used in the names of real estate businesses in Australia and would give an unwarranted monopoly to The Agency Group.

The evidence also indicated that there were six other real estate agencies using the word “Agency” in their brand name, and five real estate agencies using a roof-shaped device, either in place of the letter “A” or beside its brand name meaning it is likely that consumers would be confused by any resemblance between the AGENCY mark and “THE NORTH AGENCY”. The Court would also note that an ordinary consumer is unlikely to fail to recall use of the stylised “A” conveying the idea of a house in The Agency mark.

The nature of this industry is such that (a) it is the property (not the agent or agency) that causes a buyer to contact an agent or agency or attend a viewing of the property, typically after seeing the property on the realestate.com.au or Domain platform and (b) buying, selling and leasing of real property are among the most important transactions which ordinary consumers engage in during their lives and one would expect a high degree of concentration and focus which would ordinarily be expected in more mundane, everyday transactions, such as the purchase of groceries or ordinary household items.

Finally the Court found that the use of the definite article “THE”, before the word “AGENCY”, means The AGENCY mark conveys a claim to uniqueness among real estate agencies generally such that the Court considered that there was not a real risk of ordinary consumers wondering whether “THE NORTH AGENCY” is a commercial extension, franchise or sub-brand of The AGENCY mark.

Key branding takeaways when setting up a business

Whilst H.A.S were not found to have infringed on The Agency’s trade marks in this circumstance, it is clear that there is still a risk that you might be found to be liable for trade mark infringement, merely by adopting a website URL or a catchy social media handle. Even successfully defending an infringement claim can be expensive and disruptive to business.

By making a decision not to do your due diligence or register and protect your trade mark before setting up your business, you can lose out on the benefits of the exclusive rights afforded to you by registration, and also potentially open yourself up to litigation merely by picking a domain name or an Instagram handle.

Macpherson Kelley’s IP team is experienced in both the due diligence and registration processes, and we also regularly litigate trade mark infringement disputes.