Update: The REA Application has been passed by IP Australia, however this still can be rejected and is under review. There has been objection raised and now it will go to a hearing. The closing date for objections is nearing completion. If the trademark is successful then any legal matters are between the two parties concerned.
Realestate.com.au Limited (REA) has applied to register “realestate.com.au” as a trade mark for a very wide range of services relating to real estate, including ‘Real estate affairs’, ‘financial services’ and ‘advertising of real estate in electronic and printed format’. If this proceeds through it will be registered by the Australian Trade Mark Office.
I have received quite a few emails on this very subject. Here is an excerpt from one of these emails.
The Australian Trade Mark Office usually ignores “.com” or “.com.au” in assessing applications. In practical terms, the application for “realestate.com.au” is effectively an attempt to trade mark “realestate”. I currently control the domain name xxxrealestate.com.au. A lawyer working for REA has sent me a letter requiring me to “cease use of the domain name “xxxrealestate.com.au” (or any other name that includes “realestate.com.au”) and arrange for the transfer of that domain name to REA”. I have not responded to the letter. I know of at least 300 other domain names, perhaps your’s, that includes “realestate.com.au”
The email above has been going around the traps and points to a certain website receiving a notice from REA asking them to cease using this domain. I spoke with IP Australia today and not surprisingly they actually told me that they have had a great deal of response and any media enquiries for this Trademark are directed to one person, who has not returned my calls. However, I did get to have a brief conversation with one of their staff members.
So here is what I have learnt from IP Australia.
1. This Trademark was initially applied for in September 2005
2. They usually ignore the .com or .com.au as it is just an address.
3. If a company wants to take action against another company for breach of trademark then it is up to the parties to resolve the matter.
I left a few messages to speak with the person assigned to media liaisons and marketing directly from IP Australia but I thought I would post this now anyway as they have not returned my calls.
Certain types of trademarks make me cringe, especially ones that are ambiguous in nature. If you look online you will see thousands of domain names with the words realestate.com.au included in the domain name. REA has assured me and I am sure they will send out a letter to agents assuring them that their intentions are honourable.
The Trademark in question only relates to realestate.com.au being used – despite the circulated letter telling us that the words real and estate could also be applied. Is REA going to enforce this on each of these domain names? I doubt it, but there is the problem, I cannot say “categorically no”, because it is open to interpretation.
Of course it would make no sense for realestate.com.au to go around issuing letters to their own clients, but it does give them room to do it to all of the websites that are in competition or companies that are not clients with them and have the words realestate.com.au somewhere in the domain name and if do not have like registered business names or companies.
Recently Apple has sued New York Green campaign for using an ‘Apple’ that Apple said is too similar. Judge for yourself, but to me it is nothing like the Apple logo and this is my biggest problem with the realestate.com.au trademark. Whilst this may be a stretch and yes the USA have different laws (the realestate.com.au trademark only applies to the Australian market) it does raise so many questions.
The major one being, that REA’s legal department could issues legal letters to companies who would then need to defend themselves and I doubt this would be a cheap exercise for any small/medium company. So my only problem with this is the interpretation of the Trademark in question.
After a conversation with REA, they have made it clear they will only be doing this with websites that have no intention, but to mimic the look or name of realestate.com.au. I have no problem with any company protecting its image, but I think this one is just too open to interpretation.
HERE IS A RESPONSE FROM REALESTATE.COM.AU
You may have recently received an email from Mick Hollingsworth Managing Director of ABC Photosigns in Sunshine, Victoria in regards to our application to register our name, ‘realestate.com.au’, as a trade mark.
We would like to clarify a number of his claims surrounding the trade mark application to reassure that trade marking ‘realestate.com.au’ will not restrict your trading or marketing of your real estate business.
1. What we are doing?
We have made an application to register our trade mark ‘realestate.com.au’. This is a very common practice for any business that is seeking to protect what it has established over many years.
The trade mark application is for the name ‘realestate.com.au’ not ‘real estate’ or any other version of those words.
By clicking on this link, you can see other examples of Australians companies that have also registered trade marks: http://www.ipaustralia.gov.au/trademarks/ex_index.shtml
2. Why have we made this application?
We have invested heavily in building our brand over the past 10 years. In fact, much of our business is built upon the recognition amongst our customers of the name ‘realestate.com.au’. Increasingly more and more consumers choose realestate.com.au as their first place to look at property.
As the website has become increasingly popular, there are an ever increasing number of companies who have set up websites that look like ours and who often apply for a business name similar to ours. While imitation is a nice compliment, we want to make sure that our brand and our website are not copied. Similarly, it is like someone opening an Agency just down the road from you, using the same colours, agency design and a very similar name to yours!
3. What is the process we went through.
We’ve applied to the Australian Trade Marks Office to register realestate.com.au as a trade mark. It went through a standard, straightforward process, including a review of the application which resulted in the Office determining that we should be granted the trade mark.
4. What does this mean for you?
We are registering the trade mark ‘realestate.com.au’ not ‘real estate’ or any other version of those words.
This does not affect your ability to describe your business using terms like; ‘real estate’, or for example if your business was named ‘Richmond real estate’ or ‘Bobs real estate it would not stop you from using the domain names richmondrealestate.com.au or bobsrealestate.com.au.
Our concern with abcrealestate.com.au is that ‘abc’ is a generic name and doesn’t describe the business.
Please be assured that our application is only to protect our trade mark that has been our name for over 10 years, realestate.com.au.
Yours sincerely,
Shaun Di Gregorio
So there we have it, I am sure we will have two sides to this, one which over dramatises the effect this trademark could have and one that plays down its effect, so somewhere in the middle will be the true effect if it gets fully approved. To me it makes no sense for REA to push the boundaries of what can be done with this trademark, mainly because the negative press they will receive will only damage their business at a time where they want to be softening their relationships with agents.
But to me even Shaun’s letter does raise more questions than it answers. I think anyone who looks at www.abcrealestate.com.au and thinks that it looks even remotely like realestate.com.au needs their eyes checked. Secondly, today I have around 30 domain names registered under my name and I have only one business name. In the late 90’s and early 2000’s, you needed a business name that closely matched a domain name to register a domain, but not anymore. Today you only have to prove you have a service that is relevant to be able to register a domain name.
To me it is just too open to interpretation and I do not think our industry can rely on the goodwill of any major organisation without legal protection, when that organisations main aim is to increase shareholders revenue.
18 Comments
Glenn Batten
Here is a letter I sent Shaun regarding his broadcasted email as per Peters post above.
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Shaun,
Thank you for your email which provides another side to this discussion.
I have no problem with realestate.com.au protecting their brand and certainly respect your right to do so however I would not appreciate REA or anybody else acting like big brother .
In that light I would just like to clarify your position on a few things. Can you answer a few questions :
1. Has your application for the trademark been totally approved and beyond a review or objection period? Your letter read to me the first time that you have been granted the trademark but carefully reading it again you still have other things which indicate this may not be the whole truth. If there was still time to lodge an objection of your application I am sure you would not want to misrepresent this.
2. You have accused abcrealestate.com.au as being a copy of your website. How so? I visited their website for the first time today after receiving your letter and cant see any more similarities than any other real estate portal. The colours, look and feel are all different and what is similar such as the search functionality is surely not able to be claimed as intellectual property as it features on all property portals in one form or another. I don
Geanne M
Shaun, I have a domain name with the words realestate in it and it is not related to my business name at all. What does that mean for my company?
As for point 4. What my business name or my company name have to do with my domain name, that is my business and not yours in many cases it comes down to what we want to be known as or what domains are available.
How dare you try to push the fact anything to do with the generic name real estate onto a trademark which you control and you and your legal team have the right to decide who you take action against.
Robert Simeon
What REA forgot to mention is that they are 13 years old and lacking maturity as they progress through their teen years. For heavens sake the real estate industry is the largest employer in the country and it appears that ownership of the URL real estate is now a first and foremost priority. Why ? Well many would suggest that they should have never been granted this in the first place which further explains why this is now being contested.
Richardson & Wrench are celebrating 150 years in real estate in 2008 and REA who are celebrating 13 believe that all before belongs to them. As for ABC being generic we have radio, television, Learning and of course ABC soup to name just a few.
Obviously this is REA’s latest succession plan as the current model of being nothing more than an electronic home art gallery has its shortcomings. Print continues to dominate so it would appear to me that they are now pursuing becoming a real estate directory. A smart move to get in before Google where they trade mark all associations with our industry – just thinking out loud.
REA are obviously struggling with their adolescence and fighting with anyone who challenges their peer group. Guys – nobody in their right minds would absolutely copy your website template – unless you subscribe to the ABC soup theory.
Heaven forbid in years to come they are referred to as where are they now? When one looks at the directions of expenditure in real estate this is actually conducted by the real estate agents.
REA need to grow up, and quickly at that given we all know how bad those terrible teens can be ?
Shaun Di Gregorio
Hello again Glenn
Thanks for the email yesterday.
In addition to the email Peter has quoted above, I have sought to provide everyone with further clarity on the matter and hopefully clear things up.
With regard to abcrealestate.com.au:
Glenn Batten
Shaun, thanks for your response.
As I stated, I have no problem with you or anyone protecting their brand. For me it is only the wider issues at play that concerned me and obviously a number of other people. The actions taken with abcrealestate.com.au seemed to run contrary to your stated position which caused the confusion but you have now cleared that matter up.
It’s always those pesky lawyers 🙂
Thanks again.
Sherlock
I have registered http://www.toprealestate.com.au for more years than Murdoch has owned realestate.com.au and we have used continually for about 7-8 years as type of webservice and product grouping. It is a functioning part of our software and is an identity. We have prior use and easily proven.
Trading marking of websites is non-sense and dangerous precendence.
REA also own ‘www.rentals.com.au’ do they trademark that as well so sites like ‘www.rentalz.com.au’ which we own and again before they owned ‘www.rentals.com.au’, do they then move to say it is trading off when they do not even use that website they own. We have just license ‘www.rentalz.com’ to a USA company for holiday listings.
Yep another grand plan to screw everybody in the business using trademarks and solicitors and lots of money to keep people paying thru the nose. Vote with your feet and move your business elsewhere or is this real what it is all about.
Shaun Di Gregorio
Hello Sherlock
I understand your concern.
I hope the fact that we have co-existed for 7-8 years without any conflict speaks for itself.
Please feel free to contact me directly if you would like to seek any greater assurance.
Kind regards
Shaun Di Gregorio
Robert Simeon
This thread just breaks me up:
Tuesday April 8 2008 12.18 pm Shaun Di Gregorio said “It is on this basis that a letter was sent to abcrealestate.com.au. Our concern with abcrealestate.com.au is that
Sherlock
Shaun
snip[ I hope the fact that we have co-existed for 7-8 years without any conflict speaks for itself. ]
Actually no. We started ACCC action against RealEstate / Cumberland who blocked us from advertising and we had weblogs where clients who subscribed to our services where being contacted the next day as each night the contents of our websites were downloaded an IP which indicated newscorp. So we have a taste of what a bigger company can do to a smaller company if they feel that things may not go the way they want.
snip[ please feel free to contact me directly if you would like to seek any greater assurance. ]
This may precede your involvement but at the end of the day we got the treatment from a company on a mission, which at the time they had a much bigger plan than those around them understood.
We had developed a binary technology for moving data and images much faster than XML/zip feed. Rather than fight a battle financially we could not win we changed this technology slightly, introduced it to the optometry industry and we are largest player in the web transaction area in the Southern Hemisphere. Just brought NZ on line and the linkage between Aus/NZ and India.
I have taken the view the only players that will challenge RealEstate.com.au is Google and MS/Yahoo [ which will happen ] and they will move into this market with FREE rental and sales uploads to get their add dollars. The API’s have been released for Google and with realestate.com.au massive over charging you are making yourself more vulnerable to a back lash via this mechanism.
We provide a service to our clients to upload to DOmain and Realestate as part of our services and we appreciate there is a market for everybody. I hope that realestate.com.au does not try to railroad players that it can outspeed from the market place, but I suspect this is exactly where you are heading.
Robert Simeon
Oops – Pandora’s Box just opened a bit wider 🙂 Tsk Tsk !!
Glenn Batten
ouch!
snoop
It is kind of interesting esp the google debate.
REA makes its money providing its 4m eyeballs to agents who pay 800 per mth for the privelige.
Google prob has10 times as many eyeballs and if they go free where does that leave REA?
They will have to create significantly more value add to agents to stay in the game.
I have always thought the forward weakness of the rea model is that it doesnt link to the agents own website.
I am sure it gives the REA board sleepless nights.
Sherlock
Snoop
Just come from a USA conference which had much discussion re webportals and Yahoo was there and answering questions. Apparently Yahoo, Joomla and Google as talking regards a common search engine upload interface/API for the FREE uploading of Rental, Holiday rental and Sales properties to the revelant site. This provides content which is their role to provide. They already provide the maps.
I agree with you from 2009 it will be a changing landscape
Robert Simeon
We all know that over time everything changes. It would be interesting to see if REA would like to comment on where they see their Australian business model in five years time ? Given that free uploading of real estate data at Google and others is all but a fait accompli.
The next phase of property portal will (in my humble opinion) be much closer connected to print where this time the two will go together as against previously trying to attack one another. Just as interesting is that the real estate agents were the ones to identify that the two can and should co-exist given the different demographics that real estate offers.
News Ltd would be much better off by launching their own 100% owned real estate property portal that backs-up their extensive community owned newspaper circulations.
Lisa
Wash your mouth out with soap Robert Simeon!
snoop
I think you are right Robert.
News should go to 100% of rea and delist.
That way they get a cohesive strategy.
Robert Simeon
Hmmmmmm – would that possibly be a *squeaky clean* Fairfact’s chick getting off her soap-box ? They love their bubbles down at Darling Island.
Greg Vincent
Hi Shaun, I get the reason for wanting to register the Trademark as a company, but if it is approved can you then legally request a royalty for the use of the realestate.com.au component within a domain name?
( I’m thinking along the lines of what Justin Herald has done with the word ‘Attitude’? – He has been raking in huge dollars in royalties.)