17 December, 2013
REA Group Ltd v Real Estate 1 Ltd (No 2) [2013] FCA 968
Following the substantive judgment in June 2013, the Federal Court has now handed down its decision regarding the remedies in this dispute between rival online real estate businesses.
In June 2013 Justice Bromberg heard claims brought by REA Group Ltd (first Applicant) and realestate.com.au Pty Ltd (second Applicant) (together, the Applicants) against rival real estate company Real Estate1 Ltd and Sixteen Blamely Pty (first and second Respondents) with the third to sixth Respondents being named principals and workers of the company (together, the Respondents). The Applicants brought actions under the Trade Practices Act 1974 (Cth) (TPA) (the predecessor to the Australian Consumer Law), common law passing off and trade mark infringement under the Trade Marks Act 1995 (Cth).
The Applicants, were successful in respect of only some of their trade mark infringement claims and the Court dismissed the Applicants’ other claims of trade mark infringement, passing off and conduct in breach of the TPA.
In determining remedies, the Court noted that the Applicants did not make a claim for damages or an account of profits; rather they requested a declaration that the first and second Respondents infringed the relevant trade marks. The Court held that there was utility in making this declaration as it served to vindicate the Applicants’ claim and record the Court’s disapproval of the infringing conduct. The Court then ordered that the first and second Respondents be restrained from using the infringing trade marks in relation to online real estate advertising services, and that the Respondents transfer registration of the relevant domain names that infringed the Applicants’ trade marks to the first Applicant within 30 days.
The Court took into account the principle that where a litigant has succeeded only upon a portion of its claim, it may be reasonable for the litigant to bear the expense of litigating that portion in respect of which the litigant has failed. Subsequently, as the Applicants were only successful in some of their trade mark infringement claims, the first and second Respondents were ordered to pay 70% of the Applicant’s costs of the proceedings. No cost order was made against the third to sixth Respondents.
For further information, please contact:
Anita Cade, Partner, Ashurst
Jessica Norgard, Ashurst
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