?So You Think You Can Fool Potential Customers By ... - Sajen Legal

In a recent decision, the Federal Court of Australia shed light on the subsequent liability arising from using a competitor?s registered trademark in domain names and websites.?

In Edgetec International Pty Ltd v Zippykerb (NSW) Pty Ltd, Justice Reeves explored the provisions of the TRADE MARKS ACT 1995 while explaining when a registered trademark will be considered infringed.

Facts:?

Edgetec (Applicant) sold franchises for concrete edging businesses and trades under the name Kwik Kerb.??

Zippykerb (Respondent) sold equipment, training and marketing materials to concrete edging businesses and trades under the name Zippykerb. Mr George May, the second respondent, was the main individual behind Zippykerb.?

Edgetec was the registered owner of five trademarks, which it used in connection with its concrete edging business. Two of those trademarks were word marks and the other three were stylized marks.??

In the present application, Edgetec claimed that Zippykerb and Mr May have used two of their registered trademarks, as trademarks, in two ways.

First, out of the internet domain names registered by Mr May, the first three domain names used the words ?Kwik Kerb? .?

Secondly, Edgetec complained that all of the domain names were linked to a single website, www.zippykerb.com. When one opened that website, the words ?Kwik Kerb? appear numerous times in different contexts on the web pages located on that site.??

Edgetec claimed that the majority of these uses of its registered trade marks ?Kwik Kerb? were in breach of the provisions of the Act. Edgetec sought a permanent injunction against Zippykerb.?

Key point:?

Whether, use of words similar to a registered trademark in domain names and on websites can be considered as infringement.??

Decision:

JusticeReeves found the following:

1. ?While the vocabulary of the English language is common property available for use by all traders to describe their goods and services, words or expressions that have been coined or invented and used as such to signify a particular trader?s goods and services are generally not. On a side-by-side comparison, the signs or words ?Kwik Kerber?, ?Kwik Kerb er? and ?Kwik Kerbing? are all substantially identical to Edgetec?s registered trade marks ?Kwik Kerb?. Dealing first with the essential features of the registered trademarks, they both begin with the coined word ?Kwik? and that word is then immediately followed by (but separately from) the English word ?Kerb?.

2. The appearance and separation of the first two words in both, including the capitalisation of the letters ?k?, is identical. The only differences are that Zippykerb has added the letters ?er? (sometimes with a space) or ?ing? after the word ?Kerb?. However, taking into account that the first eight letters are identical in all respects. The addition of the two letters ?er?, nor the three letters ?ing?, at the end, significantly affects the total impression of resemblance between the two. Thus, the signs or words used by Zippykerb on its website are substantially identical to Edgetec?s registered trade marks.

3. Zippykerb used the substantially identical signs or words in a domain name to redirect internet users to its website and that website displays, as it plainly does the goods and service being offered by Zippykerb, this is trade mark use of those signs or words. That is so because this use of a domain name to redirect potential customers to a website displaying one?s goods and services is analogous to using those words as a sign on the front of a shop to indicate the goods or services that are sold within.

4. In each of the eight uses, the ?Kwik Kerb? mark has been used to attempt to distinguish Zippykerb from Kwik Kerb, or to compare the price of Zippykerb?s product with the product associated with the ?Kwik Kerb? mark. It may be accepted that none of these particular uses is a trade mark use. Nonetheless, they do not, in my view, act to reverse or ameliorate the trade mark usage of the ?Kwik Kerb? mark that has occurred elsewhere on Zippykerb?s website.

Thus, Justice Reeves?granted the permanent injunction sought by Edgetec

Lesson:

The case highlighted that displaying statements stating that the goods and services offered in a website are not those of the holder of the registered trademark in a website will not clear you off the subsequent trademark infringement liability for using the registered trademarks in the websites and domain names.

Source: http://www.sajenlegal.com.au/so-you-think-you-can-fool-potential-customers-by-using-part-of-my-trademark

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