There appears to be no end in sight for the war of words that has erupted in the Australian real estate industry over who has the right to trademark certain terms.
Earlier this week, the Real Estate Institute of Australia (REIA) slammed a move by REA Group to trademark “realestate.com.au”, arguing the move could jeopardise the use of the term “real estate” by other businesses and professional groups.
The lobby group is equally upset about the REA Group’s bid to re-register the trademark “property.com.au”, the website of which is connected to REA Group’s realestate.com.au.
David Airey, president of the REIA’s Western Australian branch, told SmartCompany if the trademark application is granted, it could jeopardise the use of the term “property” by other members of the industry.
“The term ‘property.com.au’ is simply too generic and descriptive of the entire profession,” says Airey.
“The REA Group has previously tried to prohibit others from using the words ‘real estate’ in their domain names and their aggressive business model is unwelcome and unhelpful in a free market.”
Airey says he is particularly concerned about the a possible situation in which REA Group is able to oppose trademark applications from competing businesses.
“You can imagine the cost and damage that these businesses could incur if they were forced to change their business trading name or pay a licence fee to use the word ‘property’,” says Airey.
IP Australia has already granted REA Group’s bid to trademark the words in “relestate.com.au”, but a decision is yet to be made on the group’s bid to register the “property.com.au” trademark.
A spokesperson for REA Group told SmartCompany the trademark application for “property.com.au” was lodged more than five years ago and renewed last year.
“It has not yet been accepted by IP Australia and we have no plans to progress this application,” says the spokesperson.
A document seen by SmartCompany indicates the group applied to re-register the mark on May 30, 2013 and acceptance is due on October 10.
The application relates to good and services in Class 35, which covers the advertising of real estate in electronic and printed forms, and Class 36, which covers real estate affairs, including the financial and mortgage brokering and advice and valuation and investment services.
Finlaysons intellectual property, media and technology partner John MacPhail previously told SmartCompany it is unusual for businesses to attempt to trademark a URL.
“The reason is they just don’t need that kind of monopoly because they already own the domain name,” said MacPhail.
MacPhail said in the case of the “realestate.com.au” application, REA Group would have been required to present substantial evidence to IP Australia that consumers and other businesses clearly link the words realestate.com.au with REA Group’s service.
But despite the term ‘real estate’ being too generic to trademark itself, MacPhail says “it’s a crowded field” with more than 500 trademarks on the IP Australia register that relate to ‘real estate’ and another 83 applications that are pending.