IP Australia clarifies realestate.com.au trademark application
by Peter Ricci, on 11th April, 2008 • 1 Comment
This is a letter from IP Australia in relation to the realestate.com.au trademark application.
April 2008
Statement regarding realestate.com.au‚
There has been considerable interest in the acceptance by IP Australia of the trade mark Œrealestate.com.au‚ for a range of goods and services including real estate affairs and advertising of real estate. The registration has been opposed by at least one party. Other parties have the opportunity to oppose until 17 April 2008.
Background
A trade mark‚s function is to distinguish, in a commercial sense, one person‚s goods or services from the similar goods or services of another.
Applications for trade mark registration are examined. Marks that other traders would ordinarily want to use, including those which are purely descriptive, would not normally be accepted. However, it is possible for an applicant to overcome problems of this nature with substantial evidence of use showing the trade mark has acquired distinctiveness or reputation.
If a trade mark is accepted, whether on the basis of evidence or not, it is advertised to allow others to oppose registration if they wish to do so.
Unlike examination, opposition allows both sides to fully put their case. It typically involves three stages of presentation of evidence which can in total take over 12 months. At the conclusion of the evidence stages, a Hearing Officer will decide whether to register or refuse the trade mark. This decision may be appealed to the Federal Court.
This particular trade mark application went through the normal examination process and as would be expected, evidence of use was required before it was accepted.
As noted above, registration of this trade mark has been opposed. The opposition process will allow opposing parties to express their views about the appropriateness of registration of the mark.
**If the mark were to be registered, registration would provide rights in the mark as a whole and not in specific parts of it. Moreover, where parts of a mark are descriptive, registration would not necessarily stop others from using those terms. The law also provides a range of defences to infringement action, including where the term is used descriptively. This type of conflict would be resolved by determining whether consumers are likely to be confused by the similarity in the respective terms. It would for instance be highly unlikely that the owner could prevent use of the term „real estate‰ by others.
IP Australia has no role in determining infringement matters. These are decided by the courts.
End of letter.
Comments
Highly Unlikely.. but not Impossible, but since its decided by the courts, I doubt he could say that anyway.
Intellectual property is a touchy subject and when somebody looks at securing a process, term, logo, system, etc etc that everybody uses then you can understand everyones scrutiny.
As an example, in the US there is a huge battle going on over a patent protecting a “Real Estate Search and Location System and Method” that was issued in 1999. Many experts have claimed that the enforcement by the courts of such a patent would be “highly unlikely” yet that has not stopped the whole fracas.
It is a mapping system “for locating available real estate properties for sale, lease or rental using a database of available properties at a central location and remote stations which use a graphic interface,” according to the patent documents. It claims a computer implemented method of identifying available real estate properties by mapping the locations of the real estate properties in such a manner that an initial broad geographic map for a selected area can be “drilled down” by successive iterations to display greater levels of geographic detail including the locations of the available properties.
So at the end of the day they claim that every real estate agent, broker, MLS, real estate portal and other website owes them money and they are going to court to get it.
The same people took Microsoft to court with the same patent years ago but filed the paperwork under the wrong name so the judge threw it out. They have since worked out that companies the size of MS can throw and endless amount of lawyers at a case like this and they are now in the process of suing just a single agent in the hopes of setting a precedent to apply to larger fish. The original patent holder took on investors to form REAL (Real Estate Alliance Limited) that now owns the patent and is suing everybody.
In December 2007 they tried to get certification of a class definition which meant that it would automatically apply to hundreds of thousands of brokers and agents across the country but the Judge through it out on technical grounds
In March this year they filed against a huge number of other companies including :
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• The National Association of Realtors (NAR), with approximately 1.3 million real estate broker and agent members nationwide;
• Nationwide real estate brokerage firms, including RE/MAX and Keller Williams Realty;
• Home builders, such as Pulte Homes and Ryland Group;
• The National Association of Home Builders (NAHB);
• Enterprise computer software providers to the real estate industry, including Fidelity National
• Real Estate Solutions, First American Corporation, and others;
• MOVE, Inc., the company that operates flagship real estate websites such as Realtor.com, MOVE.com, HomeBuilder.com, RentNet.com, and SeniorHousingNet.com; and
• More than 25 other defendants representing nationwide classes of claimed infringers: real estate brokers, agents, multiple listing services, new home builders, and rental property owners/managers.
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All up in addition to the original lawsuit against a single agent there is five class action suits that cover just about everyone involved in the real estate industry including industry groups, realtors, brokers, builders and even software companies.
The patent owners only need one of these to pay off and they are laughing all the way to the bank. I think they are valuing their license at $1000 per year at an agent level and I read somewhere they were chasing triple damages. Do the maths… 5 Years x $1000 x 1.3million NAR members.
We are not America (thank god), but in this case there is not much difference between us should an Australian company have registered that patent back in 1999. Thankfully we inheriented real estate mapping from the states and US patents are not recognized here..
Intellectual property rights can get very messy and expensive so you can understand people getting nervous if they think that somebody is going to be given rights to something like the words “Real Estate” or even “realestate.com.au”.
Glenn Batten
11th Apr, 2008