Trade mark your building names when marketing online

The commercial benefits of registering a trade mark have once again been demonstrated by a recent Federal Court case. The case considered the use of trade marks in online marketing in the real estate industry.

The parties

Mantra Group is in the business of property management and short-term accommodation services. It secured the rights to be the exclusive on-site letting agent of Circle on Cavill, a residential apartment building on the Gold Coast.

Tailly Pty Ltd offered short-term accommodation in Gold Coast apartments, including apartments in Circle on Cavill.

The conduct

As part of its marketing of Circle on Cavill, Mantra Group has registered three trade marks incorporating the building title, in classes related to property management and temporary accommodation services.

In the course of its marketing of apartments in Circle on Cavill, Tailly had:
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  • registered a number of domain names containing the phrase “Circle on Cavill” and the word “Mantra”;
  • used the phrase “Circle on Cavill” as a keyword search term in Google AdWords;
  • used the logo that formed part of Mantra’s registered trade mark on its letterhead; and
  • used the phrase “Circle on Cavill” and the word “Mantra” as a metatags in its websites.
[/list_square_grey] In the face of this conduct, Mantra commenced proceedings against Tailly for infringement of its trade marks and for breaches of the Trade Practices Act 1974.

The case

The Federal Court found that although some uses by Tailly of the phrase “Circle on Cavill” were descriptive, most were used as a trade mark and therefore infringed Mantra’s registered trade marks. Further, the Court found that the use of the phrase “Circle on Cavill” could not be regarded as a use in good faith indicating geographical origin because the Trade Marks Act 1995 does not contemplate an origin being a privately owned building.

Tailly was ordered to transfer domain names to Mantra, restrained from using the phrase “Circle on Cavill” and ordered to pay its profits sourced from the infringing websites to Mantra.

Conclusion

This case demonstrates once more the power of trade marks and the benefits that can flow from properly registering your marks, even in situations where the prospect of enforcement may seem slight. Specifically, it serves as a timely reminder to property developers to ensure their building names are trade marked appropriately. For more information on how to protect your intellectual property, please contact Certus Legal Group.

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