News and advice
Things keep looking up for The North Agency as The Agency appeal goes south.
The Agency has lost their appeal in their trade mark infringement case against The North Agency.
In a well-publicised trademark dispute last year, Real Estate Agencies across the country breathed a sigh of relief when Justice Jackman dismissed all claims brought against The North Agency by The Agency.
The original claims were 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”.
Unknown to most, The Agency undertook an appeal of the primary judge’s findings. And recently, in a unanimous judgment, the Full Court rejected the appeal.
Again, in their findings, they highlighted the importance of distinctive brand assets, and confirmed that The North Agency name and branding did not infringe on The Agency’s IP, upholding the original decision.
In addition to the importance of distinctive visual branding, the sound of the name was also considered. In an article written by law firm Piper Alderman, the author’s Tim O’Callaghan, Travis Shueard, Zara Cox state:
“The Court highlighted that the primary judge had in fact considered aural use of the marks and found that “NORTH” was just as striking in its spoken form as in its written form, which therefore pointed strongly against any real likelihood of confusion by consumers.
“This case emphasises that an owner’s exclusive right to use a trademark is limited to the particular form of the mark that has been registered. It is important for trademark owners to consider the precise scope of their registered mark before pursuing infringement for deceptive similarity. Trademarks which incorporate composite forms, such as in a stylised form, may be more difficult to enforce than those in a straight word mark.”
Elise Steegstra, of McPherson Kelley, offers this summary:
“The decision highlights limitations of enforcing trademarks registered in a composite form or in a particular stylised form. While a composite mark may be easier to register, especially for marks that would ordinarily be considered descriptive, the protection offered by the registration is significantly narrower. Consequently, your ability to enforce your trademark is likely to be more difficult than a word mark.”
For UrbanX CEO, Dan Argent, the win goes beyond trade mark claims and speaks to bettering the industry:
“It is great to see justice prevail as, for too long, ambitious agents have been hamstrung by onerous restrictions placed upon them, or unnecessary legal action brought against them, simply for trying to better their own lives. Chris Aldren, Tulo Sila, and all the team at The North Agency are excited about now getting on with their plans to build a Northern Beaches speciality agency, but this is also exciting for the wider real estate industry and a sign to stand up for what’s right.”
With the appeal over, The North Agency are free to focus on their business and concentrate on their recently opened second office and new commercial division.
And the wider industry should be happy that common sense has prevailed.
For full legal summaries of the appeal, visit:
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