This is a letter from IP Australia in relation to the realestate.com.au trademark application.
April 2008
Statement regarding realestate.com.au‚
There has been considerable interest in the acceptance by IP Australia of the trade mark Œrealestate.com.au‚ for a range of goods and services including real estate affairs and advertising of real estate. The registration has been opposed by at least one party. Other parties have the opportunity to oppose until 17 April 2008.
Background
A trade mark‚s function is to distinguish, in a commercial sense, one person‚s goods or services from the similar goods or services of another.
Applications for trade mark registration are examined. Marks that other traders would ordinarily want to use, including those which are purely descriptive, would not normally be accepted. However, it is possible for an applicant to overcome problems of this nature with substantial evidence of use showing the trade mark has acquired distinctiveness or reputation.
If a trade mark is accepted, whether on the basis of evidence or not, it is advertised to allow others to oppose registration if they wish to do so.
Unlike examination, opposition allows both sides to fully put their case. It typically involves three stages of presentation of evidence which can in total take over 12 months. At the conclusion of the evidence stages, a Hearing Officer will decide whether to register or refuse the trade mark. This decision may be appealed to the Federal Court.
This particular trade mark application went through the normal examination process and as would be expected, evidence of use was required before it was accepted.
As noted above, registration of this trade mark has been opposed. The opposition process will allow opposing parties to express their views about the appropriateness of registration of the mark.
**If the mark were to be registered, registration would provide rights in the mark as a whole and not in specific parts of it. Moreover, where parts of a mark are descriptive, registration would not necessarily stop others from using those terms. The law also provides a range of defences to infringement action, including where the term is used descriptively. This type of conflict would be resolved by determining whether consumers are likely to be confused by the similarity in the respective terms. It would for instance be highly unlikely that the owner could prevent use of the term „real estate‰ by others.
IP Australia has no role in determining infringement matters. These are decided by the courts.
End of letter.