E-commerce heavyweights Catch Group and Kogan in trademark battle over mobile phone plans
Thursday, May 31, 2018/
Leading Australian e-commerce players Catch Group and Kogan could be facing off in court, after Catch Group initiated legal proceedings against its competitor over the use of the word “catch”.
Last week Catch Group, which is home to the Catch.com.au marketplace, BrandsExclusive and Pumpkin Patch, filed an application for relief in the Federal Court of Australia, seeking to restrain Kogan from using a website domain and other trademarks that use the word “catch”.
The dispute centres around discount mobile phone plans, which both retailers sell. In partnership with Optus, Catch Group launched its “Catch Connect” pre-paid mobile phone plans in February, which it sells from the website catchconnect.com.au.
However, the company alleges Kogan — which also sells mobile phone plans and has done so since 2015 in partnership with Vodafone — acquired the licence to the domain catchmobile.com.au earlier this year and has made several trademark applications for brand terms that use the word “catch”.
According to a statement of claim, seen by CRN, Catch Group is also alleging that Kogan has been attempting to use Google AdWords sponsored links to direct search traffic for the word “catch” through to the catchmobile.com.au site.
Further, the company says Kogan has also registered domain names for a host of other websites using the “catch” name, including catchinsurance.com.au and catchloans.com.au.
It argues Kogan is potentially breaching Australian Consumer Law by misrepresenting that the two companies are related or that their products and services are shared.
In a statement provided to SmartCompany, Catch Group said it is seeking to “restrain, among other things, Kogan from using any sign which it considers its intellectual property rights”.
On Thursday, Catch Group said it accepted voluntary undertakings from Kogan to stop using the websites and brand terms in question while proceedings are still underway.
Catch Group chief executive Nati Harpaz said in a statement Catch Group has significant brand recognition in Australia.
“Almost everyone knows who Catch is, and we have worked hard to deliver a market leading phone plan offering for consumers,” he said.
“Nearly one in seven Australians have shopped with us since 2006, and our customer base only continues to grow.”
SmartCompany contacted Kogan for comment but did not receive a response prior to publication.
Two issues to consider
John MacPhail is an intellectual property law specialist and a partner at Lynch Meyer Lawyers. He tells SmartCompany this dispute concerns two key areas.
The first relates to the targeting of keywords through services like Google AdWords and whether this can be considered an infringement.
While he says time in market, or the length of time a brand has been using a particular term, is often one of the key factors in determining who has the rights to that term, as well as who owns the trademarks, “the issue is, using someone’s name or a trademark as a Google AdWord is generally thought not to be an infringement”.
The practice is relatively common in many industries, he says, with competitors regularly targeting each other’s customers via sponsored links.
However, he says, in other cases, there has been some controversy around the embedding of terms within website meta data, which can be considered an infringement.
“The distinction is not a clear one,” he says.
“There’s a conflict of authorities and it might go either way.”
The second key area is around the registration of website domains and the extent to which a business has a connection to the domains they are attempting to register and use.
“You’ve got to have a fairly close connection with a domain name,” he says.
Time in market is not as significant a consideration in this area, says MacPhail. Rather, what will be taken into account is whether a business has a bone fide use for the site in question and whether they are using it in good faith.