A recent Federal Court case considered the legalities of a company using a trade mark owned by another party as a search term in its Google AdWords campaign.

The Federal Court case involved the Mantra Group and Tailly Pty Ltd (Tailly). Mantra owns the management and letting rights for the Circle on Cavill apartment building in Surfers Paradise. Tailly leased 39 apartments in the Circle on Cavil building and sub-letted those apartments as holiday accommodation.

Tailly marketed these apartments via websites, which incorporated three of Mantra’s registered trade marks.

Mantra instigated legal proceedings in the Federal Court. Mantra alleged that Tailly was infringing upon its registered trade marks and was engaging in misleading and deceptive conduct under the Trade Practices Act 1974 (Cth).

The Court’s decision

The Court decided that Tailly’s use of the registered trade marks was an infringement under the Trade Marks Act 1995 (Cth). The issue of whether Tailly’s conduct was misleading or deceptive under the TPA was not addressed in the judgment.

The Court’s orders

The Court ordered Tailly to:

• transfer the infringing domain names to Mantra Group;
• refrain from using the trade marks or similar words in the promotion of accommodation; and
• pay Mantra Group for the profits it earned from the infringing websites during the time it used the infringing trade marks.

What does this case mean?

This decision reinforces the importance of registering your trade marks to ensure that other parties do not use them in the online environment, including use as domain names, meta-tags and Google AdWords. It also demonstrates a Court’s preparedness to ensure that a trade mark owner’s rights are respected and that any profits gained via third party misuse are rightfully delivered to the trade mark owner.