Trademark infringement disputed in web page search results
The Full Court of the Federal Court of Australia considered whether a composite registered device trade mark containing the words "LIFTSHOP" was infringed by the inclusion of the words "Lift Shop" in the title of a competitor's web page when shown in a page of search results. The Full Court considered that trade mark infringement had not been established, because it had not been shown that the use of the words "Lift Shop" in the search results page amounted to use "as a trademark".
The parties were competitors in the market for the supply of customised elevators/lifts and disability platform elevators in Australia. Lift Shop Pty Ltd (Lift Shop) held a registered trade mark in class 7 for "Elevators (lifts)".
The dispute arose from steps taken by Easy Living Home Elevators Pty Ltd (Easy Living) to employ a marketing strategy known as "search engine optimisation" in order to improve its rankings in internet search results. The steps taken included: adding the word "Lift Shop" to the title of its web site, including the words "lift shop" in the content of its home page and nominating the words "lift shop" as a keyword. Easy Living's strategy proved effective. Once the changes were made, Easy Living usually appeared (in close proximity to Lift Shop) on page one of the results for any search that contained the term "lift shop".
Proceedings for trade mark infringement, misleading or deceptive conduct and passing off.
The complaint on all three grounds focused solely on Easy Living's inclusion of the word "Lift Shop" in the title of its webpage when displayed in search results.
An example of one such search result was:
Easy Living Lifts | Home Elevators | Lift Shop – Lift Shop
At Easy Living home elevators website you will find details on all of our lifts and home elevators here, which will help you achieve the easy living you deserve.
At trial, Justice Buchanan found that the term "lift shop" was also being used in the titles of a number of third party businesses having no association with Lift Shop, and that consumers would understand the term as having only a generic connotation. In this context, consumers would not have understood Easy Living's use of the word "Lift Shop" as suggesting any association with Lift Shop. Therefore, this did not amount to use of the words "Lift Shop" as a trade mark and did not constitute trade mark infringement. The trial judge also rejected Lift Shop's allegations that this amounted to misleading and deceptive conduct and passing off.
The Full Court dismissed Lift Shop's appeal
Lift Shop appealed against the trade mark infringement findings. In a unanimous judgment, the Full Court affirmed the primary judge's findings that consumers would have understood Easy Living's use of the term "Lift Shop" to be conveying only the character of Easy Living's business as a supplier of "lifts" and "home elevators". Rather than having the trade mark function of distinguishing its business from others, the term "Lift Shop" was performing the function of designating that Easy Living's business was the same as, or of similar character to, other businesses operating as "lift shops". Such use was, the Full Court held, "the antithesis of trade mark use".
The risk of failing to establish that a competitor has engaged in trade mark infringement is magnified when a registered trade mark owner has opted to use highly descriptive words, synonymous with the relevant field of business as, or as part of, their trade mark. Although the outcome in this case was significantly affected by the fact that the words in question were highly descriptive, this will not always prevent a finding of trade mark infringement. Each case should be considered on its own facts. As Justice Bromberg's decision in REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559 shows, there are some circumstances where the display of a search result containing descriptive elements will suffice to constitute trade mark infringement.
