Should REA Group be able to trademark “realestate.com.au”?
The REA Group is looking to trademark “realestate.com.au”, in a move that has irritated the Real Estate Institute of Australia (REIA) who are now asking them to withdraw their application.
REIA president Peter Bushby says that it could affect other companies’ ability to use the term “real estate” in their titles.
“Given recent media reports about REA Group, their timing with this latest move to register realestate.com.au could hardly have been worse,” said Bushby.
“REIA encourages competition through quality service delivery. REA once again appears to be making a technical grab for control of those things that belong to the industry at large. It has in the past tried to prohibit others from using the words “real estate” in their domain names.”
He notes a case where Real Estate 1 Ltd in October 2010 faced proceedings from REA Group against them for the use of their trading and domain name realestate1.com.au.
The court records, however, show that the realestate1.com.au business was directly intending to be competitive.
“Mr Luff was aware of REA’s realestate.com.au property portal business and understood that the property portal he intended to establish would be in direct competition with REA’s portal,” the records note.
He also had the site realcommercial1.com.au.
“REA makes no complaint about Real Estate 1’s use of the mark “realestate1” but when that mark is used in conjunction with “.com.au” in relation to the websites of Real Estate 1, REA claims that such use infringes its registered trade marks,” the court documents reveal.
“In my view, Real Estate 1’s use of the Real Estate 1 logo is not deceptively similar to REA’s realestate.com.au trade marks. I have arrived at the opposite conclusion in relation to the realcommercial.com.au trade mark and the use by Real Estate 1 of the realcommercial1 logo,” the judge noted.
“I have found that by using the marks realestate1.com.au and realcommercial1.com.au, Real Estate 1 infringed REA’s trade marks in all but one of the different uses alleged by REA. Otherwise, REA’s claims expounded at trial have failed.”
However, during the proceedings it was noted that “real estate” and suffix is a natural choice for many looking to indicate a real estate portal, noting that another of the three most popular portals – realestateview.com.au – has this feature.
Here were the others identified by the court as having this feature:
- therealestate.com.au
- realestateone.com.au
- realestate1st.com.au
- realestateworld.com.au
- ingrealestate.com.au
- realestateguide.com.au
- realestatesource.com.au
- westrealestate.com.au
- abcrealestate.com.au
- prime-realestate.com.au
- loverealestate.com.au
- bellrealestate.com.au
- realestatewa.com.au
- realestateplus.com.au
Bushby noted that ABS data in June 2013 found that there were 35,019 real estate businesses operating in Australia, with a substantial portion using “real estate” as part of their branding.
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