REA Group Ltd v Real Estate 1 Ltd  FCA 559 (7 June 2013)
Use by Real Estate 1 Ltd of various versions of trade marks containing realestate1.com.au and realcommercial1.com.au for real estate listing and advertising services infringed registrations for logo versions of REA Group’s realestate.com.au and real commercial.com.au trade marks as shown below.
Bromberg J found that, with the exception of the realEstate1.com.au logo, the various trade marks used by Real Estate 1 were deceptively similar to REA Group’s registered marks. This finding effectively gives REA Group a monopoly over highly descriptive terms in the real estate space and illustrates the value of trade mark registrations.
REA Group had operated the realestate.com.au residential property listing portal since 1998 and the realcommercial.com.au commercial property portal since 2002. The registered trade marks shown above appeared prominently and had acquired a substantial reputation and goodwill.
Real Estate 1 established a residential property listing portal under the domain name realestate1.com.au in March 2009 and a commercial property portal under the realcommercial1.com.au domain name sometime after August 2009. The domain name for the latter portal was changed to realestate1commercial.com.au in October 2010.
Significantly, Bromberg J decided that Real Estate 1’s conduct was not misleading or deceptive. His Honour considered internet searching behaviour and the very descriptive nature of REA Group’s realestate.com.au trading and domain names. The respective websites were also very different in terms of branding and user experience. Even though Bromberg J was satisfied that Mr Luff of Real Estate 1 was, at least in part, motivated by taking advantage of REA Group’s well established realestate.com.au property portal, this did not necessarily result in a finding that consumers would be misled or deceived. REA Group did not seriously press that use of realcommercial1.com.au was likely to mislead or deceive.