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.