How can you legally refer to another trader’s trade mark?
Edgetec International Pty Ltd v Zippykerb (NSW) Pty Ltd  FCA 281
The Federal Court of Australia has provided useful guidance as to how a competitor may refer to another trader’s trade mark and what use would constitute an infringement of the trade mark in the case of Edgetec International Pty Ltd v Zippykerb (NSW) Pty Ltd.
The case concerned two parties with similar business activities – Edgetec sells franchises for concrete edging businesses and trades under the name “Kwik Kerb”. The Company holds two registrations for the trade mark “Kwik Kerb” covering “concrete edging machines” and “construction and repair services pertaining to kerbing, channelling, edging and paving…”.
Zippykerb sells equipment, training and marketing materials relating to concrete edging businesses.
Edgetec claimed that Zippykerb infringed its trade mark by virtue of its use of words that are substantially identical to KWIK KERB on its webpage.
How did Zippykerb’s use Edgetec’s trade mark for KWIK KERB?
Zippykerb used the words KWIKKERB in various domain names that linked to its website. It also used the words KWIK KERBER on its website in varying contexts, such as:
- “The original kwik kerber”
- “ZIPPYKERB – Kwik Kerber business opportunity”
- “ZIPPYKERB KwikKerber is not a franchise…”
- “We are the original inventors of the worldwide ZIPPYKERB Kwik Kerber Continuous Concrete Edging”
At the bottom of the “Zippykerb” website was a box which compared Edgetec’s business and products to Zippykerb. This made it clear to any visitor of Zippykerb’s website that they were not related to Edgetec.
Did such use of Kwik Kerb constitute an infringement?
The Federal Court found that Zippykerb use of the words KWIK KERBER was substantially identical to Edgetec’s registrations for KWIK KERB. In addition, the court found that Zippykerb’s use of KWIK KERB in the domain names was for the purpose of redirecting internet users to its website. This was seen to be analogous to using another person’s sign or trade mark on the front of a shop to indicate the goods and services sold within.
Even though Zippykerb distinguished itself from Edgetec on its website, the Federal Court considered this to be immaterial to the enquiry of whether or not there had been a trade mark infringement. Fundamentally, Zippykerb had used a substantially identical word as a trade mark to designate their products. For example:
- “The Original KwikKerber™ Since October 1982”;
- “Zippykerb Kwik Kerber”
- “The Exclusive ZIPPYKERB-Kwik Kerber Training Manual”
Zippykerb had never used the words Kwik Kerber descriptively to indicate that its products provides customers a quick way of creating kerbing.
Zippykerb’s use of KWIK KERBER and KWIK KERB on its domain names was found to be an infringement of Edgetec’s registrations.
Tips for businesses on the use of other trader’s trade marks
While it is not an infringement of a trade mark to compare products sold under one trade mark with a competitor’s products (provided the claims made are accurate) it is an infringement of a trade mark to use words that are substantially identical or deceptively similar to a registered trade mark for the purpose of identifying your goods and services. This includes using a registered trade mark as a domain name to direct internet traffic to your website.
If you have any concerns about how you are referring to another party’s trade mark, please contact us and we can advise you on whether such use could pose a problem.