Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd  FCA 900 (10 September 2013)
Unsuccessful application by Lift Shop Pty Ltd alleging trade mark infringement and breach of the Australian Consumer Law arising from use of the words “Lift Shop” by Easy Living Home Elevators Pty Ltd in connection with customised elevators/lifts and disability platform elevators.
The parties were competitors in a small, but very competitive market, with Lift Shop’s products sourced from China and Easy Living’s products coming from Europe.
Lift Shop owned the trade mark registration shown below:
Its website title and brief description on search results was typically as follows:
Australia’s No 1 for Luxury Home Elevators | Lift Shop | Multi-Award … www.liftshop.com.au/ ▼ Lift Shop is Australia’s No. 1 multiple award-winning leader in quality, luxury home elevators. Lift Shop is a national supplier of luxury home lifts, residential lifts …
In September 2012, Easy Living updated its website to make greater use of search engine optimisation (SEO) tools. It used the words “lift shop” as key words, revised its home page to include phrases such as “looking for a lift shop” and “we’re a lift shop in our 14th year”, and significantly arranged for the description of its website in search results to prominently display the words “lift shop”. An example was:
Easy Living Lifts | Home Elevators | Lift Shop – Home Elevators … www.easy-living.com.au/ ▼ At Easy Living home elevators website you will find details on all of our lifts and home elevators here, which will help you achieve the easy living you deserve.
The judge, Buchanan J, was satisfied that use of the term “Lift Shop” in the title of Easy Living’s website, and the term “lift shop” in the content of the home page, together with the designation of the term “lift shop” as a keyword, was intended to ensure that details of, and access to, Easy Living’s website were made available to anyone who might search for that term, as well as for “lift” or “lifts”. However, the parties were not the only businesses to be identified if a search for “lift shop” was made. It was apparent that the term “lift shop” was also being used descriptively by unrelated businesses to draw attention to themselves.
It was clear that one commercial objective of Easy Living was to appear in search results which were likely to identify Lift Shop. That objective was part of a wider objective to compete with Lift Shop whenever possible by drawing that company’s potential customers’ attention to Easy Living’s services. However, that did not mean that Easy Living suggested, or intended to suggest, an association with Lift Shop. After considering the evidence, the judge was not satisfied that it was ever any part of the objective of Easy Living to suggest any association between its business and that of Lift Shop. On the contrary, the objective was to differentiate Easy Living’s business and make it clear that doing business with it was open as an alternative to doing business with Lift Shop. Significantly, the evidence clearly suggested that, in this area of commercial endeavour, the term “lift shop” also had an understood generic connotation.
In the judge’s view, there was clear differentiation between the entries relating to Easy Living which appeared on any search page and those which related to Lift Shop. The URL’s were quite different. The descriptions in the titles were different. There was nothing on the search page itself to suggest any association between the two businesses. Usually, the respective entries appeared in close proximity so that, if anything, the distinction between the two businesses was more emphasised than obscured. Any visit to the respective websites (which was a necessary step if the information provided by the search page was to be followed up) could only reinforce the appearance of separate businesses, in competition, and further dispel any idea of association between them. As a result, the cause of action under the Australian Consumer Law was not established.
On the trade mark infringement claim, particularly with regard to the inclusion of the words “Lift Shop” in the title of Easy Living’s website in search results, the judge was not satisfied these words were being used as a trade mark, much less as its own mark. Rather, these words were being used in a descriptive way to take advantage of the operation of search engines.
Given the conclusion on the trade mark use aspect, it was not necessary to decide whether the plain words “Lift Shop” as used by Easy Living were deceptively similar to the registered trade mark owned by Lift Shop. However, the judge but did comment that he would have been inclined to find in the affirmative.