Can you trademark ‘real estate’? Battle heats up in intellectual property land grab

A trademark battle is emerging in the Australian real estate industry, with the Real Estate Institute of Australia (REIA) slamming a move by the REA Group to trademark “realestate.com.au”.

The REA Group, which uses the realestate.com.au domain name to list properties, applied to IP Australia to trademark the words in realestate.com.au in mid-2013 and this week IP Australia has granted its request.

But industry lobby group REIA says trademarking the term could jeopardise the use of the term “real estate” by other businesses and professional groups.

“REA once again appears to be making a technical grab for control of those things that belong to the industry at large,” said REIA president Peter Bushby in a statement.

“It has in the past tried to prohibit others from using the words ‘real estate’ in their domain names.”

However, a spokesperson for REA Group told SmartCompany this morning the trademark “does not mean realestate.com.au will ‘own’ the words ‘real estate’”.

“Our trademark would only extend to real estate portals, not to real estate agency sites, and there would be no change for sites such as realestateview.com.au,” says the spokesperson.

And the spokesperson says REA Group already has trademarks for versions of its realestate.com.au logo.

“This new trademark will recognise the goodwill and reputation we have created through our brand and help protect it from parties who may try to leverage off this.”

But Bushby said the term “realestate.com.au” is generic and describes the entire profession.

“This is true particularly given the size of the real estate industry and the number of businesses operating with the term realestate.com.au either in their business or domain name,” he said.

“Data from the Australian Bureau of Statistics shows that as at June 2013, there were 35,019 real estate businesses operating in Australia. A substantial proportion of those businesses use the phrase “real estate” as part of their branding to assist consumers to identify the industry and range of services that those businesses provide.”

“Many also use a phrase that includes or is similar to realestate.com.au as part of their URL for the online delivery of their services,” he said.

The REA Group’s claim over the term has already been tested by the courts, with the company successfully taking action against Real Estate 1 Ltd in 2010 over the use of realestate1.com.au.

However, Property Observer reports in that case, the judge found the realestate1.com.au business was established to directly compete with REA Groups’ realestate.com.au.

Finlaysons intellectual property, media and technology partner John MacPhail 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,” says MacPhail.

MacPhail says given REA Group has already had trademark protection for its realestate.com.au logo since 2002, its latest bid is simply taking their IP protection “one step further”.

MacPhail says 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.

While MacPhail agrees the term ‘real estate’ is too generic to trademark, he says there are currently more than 500 trademarks on the IP Australia register that relate to ‘real estate’ and another 83 applications that are pending.

“It’s a crowded field,” he says.

And while other businesses will now be prevented from using realestate.com.au, MacPhail says it will still be possible to register trademarks that are “very similar”.