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ARTICLE · 09 SEPTEMBER 2014

Don't expect exclusive use online if your trade mark contains descriptive words

Clayton Utz
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Businesses should still take care in any search engine optimisation strategy to avoid any trade mark infringement.

AustraliaIntellectual Property
Timothy Webb
Timothy Webb
Nicole Landerer
Nicole Landerer
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Key Points:

You don't get a monopoly over descriptive words that form part of your trade mark.

Having an online strategy is crucial for many businesses these days, but the need to use certain terms to appear in Google searches is giving rise to trade mark disputes. In Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2014] FCAFC 75, the Full Federal Court considered whether a composite registered trade mark with the words "LIFTSHOP" was infringed by a competitor's use of the words "Lift Shop" in the title of its webpage.

The dispute

Lift Shop Pty Ltd and Easy Living Home Elevators Pty Ltd are both suppliers of customised elevators/lifts and disability platform elevators.

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