In the competitive sphere of property development, distinguishing one’s brand through effective intellectual property strategies is not just advantageous, it’s imperative. The construction and real estate sectors are teeming with businesses whose names often overlap, especially within the same geographical regions. This overlap can lead to difficulties in establishing a reputable and recognisable brand and significantly, brand confusion and dilution.
Brand creation and trade mark registration for property developers
For property developers, the cost of branding investment in logo creation, advertising, building signage and the development of a market presence, can be substantial. A strong and distinctive brand can capture the essence of the developer’s vision and allow a development to stand out from the crowd. Registering trade marks for names, logos, domain names and social media handles provides developers with exclusive monopoly rights over these identifiers. This exclusivity establishes clear ownership but also provides a legal basis to prevent others from capitalizing on a well-established reputation. Moreover, registered trade marks act as a robust deterrent against potential infringers, safeguarding a developer’s market presence and preventing customer confusion.
The importance of trade mark searching and seeking registered protection early
Registering a trade mark with IP Australia empowers developers with the protection needed to enforce their exclusive rights to use and promote their brand. This proactive step is crucial in preventing the emergence of similar names within the industry, which could otherwise erode a developer’s brand equity.
An often overlooked step in securing a trade mark registration involves thorough searching prior to brand adoption, to identify existing marks that could conflict with the proposed brand. Due diligence in the nature of trade mark register and market searches can avoid legal conflicts as well as time to market resulting from time-consuming and costly trade mark opposition proceedings. A number of Federal Court cases highlight the potential pitfalls and demonstrate the benefits of rigorous trade mark due diligence and selection, as well as the benefits conferred by registered trade mark protection in the context of commercial property development.
The dispute in Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769 centred around the “Q1” building, a landmark skyscraper located on the Gold Coast, Queensland. The Mantra Group, through its licensing entity Mantra IP Pty Ltd, sought to trademark “Q1” in relation to its business operations within the building, encompassing leasing, conferences, and resort services. However, the respondent Spagnuolo, was already operating a holiday accommodation business under the name “Q1 Holidays Gold Coast” and owned the domain qlholidaysgoldcoast.com.au. Spagnuolo opposed Mantra’s applications on the basis that “Q1” was primarily a geographical identifier, which should remain available for use by other traders within the building. The delegate of the Registrar of Trade Marks initially held in favour of Spagnuolo on the basis that Q1 had a geographical connotation and was not registrable. The Federal Court ultimately found in Mantra’s favour however, the costly proceedings before both the Trade Marks Office and the Federal Court may have been avoided if the building developer’s original trade mark applications, filed well before the applications in dispute, had been filed broadly enough to cover all of the services, including the holiday accommodation services, offered from the Q1 building. If the developer had acquired broad rights from the outset in respect of Q1 it would have had control over use of the marks rather than having individual tenants accruing common law rights in the brand and then challenging the building owner’s own use of the building name.
The dispute in Henley Constructions Pty Ltd v Henley Arch Pty Ltd [2021] FCA 1369 likewise demonstrates the need to undertake thorough due diligence prior to the adoption of and investment in, a trade mark. Henley Arch had been operating in Victoria since 1989 and in 2006 applied to register, and was granted, a number of HENLEY trade mark registrations. Henley Constructions, founded in Sydney in 2006, relied on the availability of the name on the ASIC register in adopting HENLEY CONSTRUCTIONS as a name.
When Henley Arch became aware of Henley Constructions’ use of a similar name a number of years later, it brought trade mark infringement proceedings before the Federal Court. Henley Constructions argued that its conduct did not amount to infringement because had it applied to register its HENLEY CONSTRUCTIONS marks, it could have achieved registration in light of its honest concurrent use over nearly 10 years. However, the Court found that at the time of adopting its HENLEY CONSTRUCTIONS trade mark, the sole director of Henley Constructions had been made aware of the existence of Henley Arch, but failed to make reasonable enquiries concerning the use of that mark with the effect that Henley Constructions’ adoption of HENLEY CONSTRUCTIONS was not ‘honest’.
This case demonstrates the need to make reasonable enquiries (and ideally, conduct thorough trade mark searches) before adopting a mark, and adopting a name honestly and in good faith. Even if a business name or company registration can be secured, those registrations do not provide rights in the name itself and will not provide a defence to trade mark infringement. Re-branding after market launch can be costly and accordingly, we recommend appropriate trade mark due diligence is conducted as early as possible to avoid disputes, costs and delays in brand launches.
Adopting distinctive, enforceable trade marks to distinguish your brand and services
Once a trade mark registration is secured, it is important to be aware of the scope of protection afforded by the registration. Registrations for word trade marks will generally provide the broadest protection however, where the word has some connotation with respect to the goods and/or services registered, the scope of protection may be limited. In the case of Agency Group Australia Ltd V H.A.S. Real Estate Pty Ltd, Agency Group Australia Ltd attempted to enforce its trade mark registration for a stylised version of the words THE AGENCY, against H.A.S. Real Estate Pty Ltd’s use of THE NORTH AGENCY (logo). Although Agency Group Australia appears to have been able to secure a registration for its stylised THE AGENCY logo by demonstrating acquired distinctiveness, its registration was not construed so broadly that use by H.A.S. Real Estate Pty Ltd of THE NORTH AGENCY logo would amount to infringement.
This case demonstrates the risk associated with adopting relatively generic word trade marks even where a stylised version will be sufficient to secure a registration. Descriptive and generic trade marks, even where some registered rights can be secured, are difficult to enforce and we recommend where possible, trade mark owners develop and register strong, distinctive trade marks that distinguish their marks from those of other traders.
Takeaways
For property developers and real estate professionals, these cases illustrate the importance of adopting proactive intellectual property strategies to safeguard your brand. As demonstrated, a failure to conduct comprehensive searching prior to brand adoption or, a delay in seeking registered trade mark protection, can result in costly trade mark opposition and/or court proceedings, and expensive re-branding. It is also important to create strong and distinctive brands that leave a lasting impression on consumers and are readily enforceable. Please also see our related article: Five trade mark traps to avoid when launching a new brand.
At HWL Ebsworth, our Intellectual Property team can work with your marketing and legal teams to create strong brands that are distinctive and enforceable, strategically positioning your brand at the forefront of a competitive market.
This article was written by Luke Dale, Partner.
