HG Alert: Real Estate Marketing on the Internet: Using registered trade marks online - 1 Jul 2010

A recent Federal Court case demonstrates how effective trade mark registration can be in providing a competitive edge in the marketplace.

The case, Mantra Group Pty Ltd v Tailly Pty Ltd, considered the use of trade marks on the internet in the context of the real estate industry.

The background to this case

Circle on Cavill is a residential apartment and retail complex located in Surfers Paradise on the Gold Coast.

Mantra Group is the exclusive on-site letting agent, although some apartments in the building are marketed through other real estate agents. Mantra is also the registered owner of three trade marks incorporating the words 'Circle on Cavill' relating to property management and accommodation services.

Tailly is a real estate agent offering short-term accommodation in apartments located in Circle on Cavill. In the course of its business it:

  • held a number of website domain names containing the words 'Circle on Cavill' and 'Mantra', used to advertise and market apartments located in the building;
  • paid for internet keyword advertisements (such as through Google's Adwords program) using the words 'Circle on Cavil' to market apartments using components of the registered trade marks owned by Mantra;
  • used Mantra's logo marks in some of its letter heads to offer real estate services for apartments located at Circle on Cavill; and
  • extensively incorporated the words 'Circle on Cavill' and 'Mantra' as metatags in its websites.

Mantra sued Tailly for infringement of its trade marks and for breaches of the Trade Practices Act 1974.

The issues in Mantra Group v Tailly

The main issues considered in this case were whether:

  • Tailly's use of the words 'Circle on Cavill' and 'Mantra' on the internet was use "as a trade mark";
  • the words 'Circle on Cavill' became descriptive of that building to the real estate industry; and
  • Tailly lawfully used these words to describe the geographical location of the apartments offered on its websites.

The findings in Mantra Group v Tailly

Reeves J found that words used prominently in websites (such as in banners) amount to "use as a badge of origin of goods and services", as opposed to a mere reference to where the apartments are located.

His Honour also found that even though the extensive use of the words as metatags is not use as a badge of origin, it can amount to use in bad faith, which mitigates available defences for trade mark infringement claims.

Importantly, His Honour found that Tailly's use of the trade marked building name could not be taken as a mere reference to the geographical origin of the apartments marketed through its websites and marketing materials.

This case serves as a reminder that owners who register building name trade marks essentially have monopoly rights, as they are entitled to prevent competitors from using the name, even if the competitor also deals with property located in the building.

For more information on trade mark protection, please contact HopgoodGanim's Intellectual Property and Technology team.