A win for The North Agency means a win for all agencies (except The Agency).

Today, common sense prevailed, and the Federal Court has dismissed an application brought by The Agency – designed to prevent a business opened by Chris Aldren & Tulo Sila in March this year from trading as The North Agency on the basis that the name was deceptively similar to its trade marks. 

Since March this year, two young Sydney dads (and successful Northern Beaches agents) have been pulled into a David v Goliath legal battle over the use of two common words: “The” and “Agency”, along with allegations that their brand, The North Agency, was designed to confuse the market.   

Thankfully for Chris Aldren and Tulo Sila, commonsense has prevailed with Federal Court Judge, Justice Jackman, ruling in their favour.

But the win isn’t just good for them; it’s a win for the industry, and a good lesson about creating a distinctive brand. 

The below excerpt from The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd [2023] is just one of many examples as to why the case against The North Agency was dismissed. 

“…it is relevant to take into account that the words “THE AGENCY” on their own have a strongly descriptive element in referring to the nature of a real estate business. The ordinary consumer would expect the word “agency” to be commonly used in the names of real estate businesses in Australia. It would give an unwarranted monopoly to The Agency Group if rival businesses were unable to use the definite article “The” and the word “Agency” in their business names.” 

As Dan Argent, CEO of UrbanX, explains, “Winning this case was crucial not just for The North Agency and UrbanX, but for our entire industry… and why we made the choice to support Chris and Tulo to the very end. 

“We pride ourselves on empowering agents and giving them the support they need to succeed independently throughout their business journey. So, when we received notice that a large, publicly listed company was coming after one of our partners about something that could impact all real estate agencies, the natural instinct was to fight for what was right.” 

According to the court documents, the case brought against The North Agency by The Agency was based on perceived similarities between the name, brand design, and associated marketing materials, with The Agency claiming The North Agency had infringed their trademark which could lead to confusion in the market.  

All claims were dismissed by Justice Jackman, who had “fundamental difficulties” with the allegations that The North Agency had devised their name and logo mark in a deceptive way and could not see any potential confusion as a “real risk”. He continued by ruling that The North Agency branding, which is a stylised ‘N’, was “visually distinct”, with the logo conveying “the strong impression of a northerly direction” while the A logo from The Agency conveyed “the impression of a house”.  

An extended summary of the claims and reasons for dismissal can be found at the end of this article. 

So, what can real estate agents learn from this case? 

According to Dan Argent, agents should “never underestimate the value of unique branding. As the case shows, if you choose a name that’s generic and create brand assets that aren’t distinctive, you’re unlikely to build a strong brand.  

“By choosing a name that relates closely to you, as an agent, and/or references your core areas you’ll be positioned to build a real name for yourself and protect yourself from claims like this one. 

“It also illustrates the power of a personal brand and to beware of being tarred with a bad brush. While I don’t see eye-to-eye with much that The Agency does, I do agree with Andrew Jensen (The Agency COO) on one thing in his statement about the power of the individual” [paragraph 29 of the Judgment excerpt below]:  

“In terms of the relative importance of the agency, as distinct from individual agents, in attracting business, Mr Jensen explains that the business model of The Agency Group has always been to put agents first.  Mr Jensen says that consumers of real estate agency services place importance on the trustworthiness and awareness of real estate agents. He says that the brand of a real estate agency under which an individual agent supplies their services is a way by which consumers can identify those qualities by verifying and assessing the past performance of the agency with which that agent is associated. He says that such a consumer’s experience with an individual real estate agent will affect the reputation of the agency and the brand under which that agent supplied their services, in that if the experience is positive then this will contribute to the value of that reputation, and if it is negative, then it will detract from that value.” 

Mr Argent continues, “As we all know, people list with people, not brands, so I hope this serves as a reminder to agents ready to do their own thing to make the change. The sooner you start building your own brand, the sooner you can start building a serious name for yourself.” 

With the case now behind them, Dan Argent tells us that UrbanX can get back to focusing on what they do best, “Empowering Australia’s best agents to build and scale their own agency”.  

As for The North Agency, they can return to what they always set out to do; provide the best real estate agency for Sydney’s Northern Beaches and spend more time with their families and loved ones.

A summary of the claims, from court documents, are below: 

• The Agency claimed the logos were too similar, and could be confused 
• The Agency claimed The North Agency website used photos with a dusk setting and white fonts, to create confusion 
• The Agency claimed both REA and Domain profile pages could be confused 
• The Agency claimed that The North Agency were attempting to pass off as being connected or associated with The Agency. 

All claims were dismissed. A summary of Justice Jackman’s rulings below, where he stated: 

“In my view, there is a number of fundamental difficulties with those submissions and the allegation that H.A.S. Real Estate has used its marks in a way which is deceptively similar to the AGENCY Mark”.  

The reasons, as they appear in court documents, are below: 

• First, the insertion of the word “NORTH” in the mark “THE NORTH AGENCY” is a substantial differentiating feature from the AGENCY Mark which would remain in the minds of ordinary consumers with imperfect recollection… I regard the use of the word “north” as a striking aspect of the mark which points strongly against any real likelihood of confusion. In my opinion, that reason alone is sufficient to undermine the applicants’ argument for infringement. 
• The second problem is that even if one takes into account the aural impression of “THE NORTH AGENCY” when spoken aloud, the use of “NORTH” is just as striking as in its written form. The stress would naturally fall on the word “NORTH” at least as much as the word “AGENCY” 
• The third difficulty is that, as the Full Court said in Australian Meat Group, the whole of the marks and all of their elements must be considered. 
• Fourth, both the word “Agency” and a stylised roof or house device representing the letter “A”, are commonly used in business names and marks in the real estate industry. Ms Kennedy gave evidence of six other real estate agencies using the word “Agency” in their brand name, and five real estate agencies using a roof-shaped device, either in place of the letter “A” or beside its brand name 
• Fifth, the context of these names being used in the real estate industry is important, in that the buying, selling and leasing of real property are among the most important transactions which ordinary consumers engage in during their lives. 
• Sixth, as to the submission that an ordinary consumer might wonder whether the services provided by THE NORTH AGENCY might be a commercial extension, franchise or sub-brand of the AGENCY Mark, I do not regard that as a real risk. In addition to the reasons already given, I add the following. By the use of the definite article “THE”, before the word “AGENCY”, the AGENCY Mark conveys a claim to uniqueness among real estate agencies generally… It would obviously diminish the claim to uniqueness for the owner of that mark to promote its business simultaneously in a contradictory way as being no more than a particular agency within the general class of agencies. That would make no sense to the ordinary consumer. 
• Accordingly, I do not regard the marks used by H.A.S. Real Estate as being deceptively similar to the AGENCY mark. 
• The N Logo and the Logo Mark are visually distinct. The N Logo is a stylised “N”, with the final vertical line of the “N” replaced by a degree symbol. The logo mark is an “A” with a horizontal line of the “A” dropped. Although both devices use two straight lines meeting at a peak, the orientation of those straight lines is clearly different. 
• Further, the two devices convey different ideas. The N Logo, with the degree symbol, reinforces the words “THE NORTH” and a northerly direction. The degree symbol conveys the idea of a compass… the N Logo conveys the strong impression of a northerly direction. By contrast, the Logo Mark conveys the impression of a house, with the two diagonal lines representing the roof. 
• I note also that, while it is not necessary to adduce such evidence, there is no evidence of any consumer having been confused.  
• [In relation to passing off] The allegation concerning “sailing close to the wind” was abandoned by the applicants during final addresses 
• In my view, the conduct of H.A.S. Real Estate is neither misleading or deceptive, nor likely to mislead or deceive, nor does it constitute passing off. It does not have a tendency to lead the relevant section of the public into error and in my view there is not a real possibility that the relevant conduct will mislead or deceive…. In my view, the conduct of H.A.S. Real Estate does not give rise to a representation to the relevant consumers that it or its real estate services are affiliated with or authorised by the applicants. I reach those conclusions for the following reasons: 

• First, there is a fundamental difference between the name “THE NORTH AGENCY” and “THE AGENCY”, namely the inclusion and prominence of the word “NORTH”. Second, there are very striking differences between the Logo Mark using the “A” device, and the N Logo mark, using the “N” device. Third, those logos appear prominently in the marketing of both The Agency Group and H.A.S. Real Estate, such that any thought by a consumer of any association would be immediately dispelled by the presence of those marks. Fourth, the word “Agency” is commonly used in the brand names of businesses offering real estate agency services… Further, stylised roof or house devices are commonly used in the real estate industry, either in place of the letter “A” or beside the brand name… Fifth, the observations of Stephen J quoted above are pertinent to the claim for a monopoly over a word which is descriptive, or has a relatively high element of descriptiveness. Sixth, the claim for a distinctive reputation in the get-up consisting of the use of a dark background, particularly including a dark sky at dusk, is fanciful, in that it is an obvious and commonplace way of making light coloured lettering stand out… Seventh, any general similarities between the look and feel of the respective agency profiles on realestate.com.au and the Domain platform are to a large extent common across all agencies where all profiles appear in a similar format irrespective of their names, by reason of the standardisation imposed by the platform operators… Eighth, as to “word of mouth” communications, I have referred above to the significance of the word “North” and to the evidence concerning the relative importance of the relationship with individual agents, rather than their agency, in real estate transactions. Ninth, the decision to buy, sell or lease a property is a very significant decision in the lives of ordinary consumers, and those decisions are necessarily made with care rather than in haste, with a heightened level of concentration and awareness. Tenth, the colour palette used by H.A.S. Real Estate is different from that used by The Agency Group: the former uses navy blue, cream and charcoal, whereas the latter uses black, white and red. 

Read the full judgement | See the REB article  | See the SMH article