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How not to step on your competitors's toes – even online
Intellectual Property Law News | July 2015
Your business’ website may form a critical part of your overall marketing strategy and is often your first point of introduction to potential customers, and it is for your competitors too... so be careful not to infringe their trade marks.
Trade marks and websites
Simply registering a domain name does not provide the proprietor of that name with rights to ownership or exclusive use of that name. This type of protection is mainly achieved through registration of a trade mark as well as registration on the ASIC Register of a business or company name. The content on your website will usually contain a number of different types of intellectual property, including:
- copyright (such as the content and look and feel of the site, or the sounds and images used);
- trade marks (including logos or words which have been registered as trade marks); or
- third party IP rights (such as images or coding which has been licensed or purchased by website developers).
Trade mark disputes may arise where similar or identical names, images, logos and even colours are on competing websites. Where a dispute arises from the use of similar or identical domain names for websites, it can be beneficial to have a registered trade mark. A trade mark is commonly a sign, word or logo which is used to distinguish goods or services dealt with or provided in the course of trade by a person [a “brand”]. In order for a trade mark to be registrable and obtain legal protection it must be deemed to be ‘distinctive’ and not simply ‘describe’ the goods or services which it intends to cover.
Descriptive words versus trade marks
Trade mark disputes may also arise where certain terms are used on websites which appear in Google searches for other businesses. In Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2014] FCAFC 75, the Full Federal Court considered whether a composite trade mark using the words “LIFTSHOP” had been infringed a competitor using the words “lift” and “shop” in the header of its website. Both companies in this case were suppliers of customised lifts, elevators and disability platform elevators and in 2012 Easy Living added the term “Lift Shop” to its website. This modification was implemented to optimise the search engine results for Easy Living’s website.
Lift Shop commenced proceedings for trade mark infringement, contravention of section 18 of the Australian Consumer Law (which relates to misleading and deceptive conduct) and the common law tort of passing off. The primary judge held that “Lift Shop” was used by Easy Living in a descriptive way and not as a trade mark.
This case highlights limitations which exist for registered trademarks containing highly descriptive words. Whilst the descriptive words could be registerable where they form part of a composite trade mark, there will be no trade mark infringement if the alleged infringer is simply using the words in a descriptive sense.
Using a competitor’s trade mark in a sponsored link may be considered to be an infringement of the Australian Consumer Law by an advertiser. An example of this comes from the High Court’s decision in Google Inc v ACCC which serves as a reminder that advertisers will be held responsible for the content of their advertisements. In this case, Google was not found to have engaged in misleading and deceptive conduct in relation to sponsored advertisements displayed on Google’s website.
Website optimisation might also infringe trade marks
It is important to note that registration of business, company and domain names does not grant ownership or intellectual property rights in those names to the registrant as registration is usually renewable every 12 months or so. Businesses should take care in any search engine optimisation marketing strategy to avoid trade mark infringement. To avoid potentially unlawful conduct, businesses and advertisers should avoid using a competitor’s trade mark in their headline, text, keywords or display URLs. Unless you have written authority from the owner of a trade mark, you should avoid using the trade marked material on your website to redirect a consumer to your website. Such conduct can constitute common law passing off or misleading and deceptive conduct under the Australian Consumer Law.
