Full Federal Court elevates importance of 'use' in the trademark context

In Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd ([2014] FCAFC 75), the Full Federal Court of Australia has affirmed a decision by a primary judge which found that the use of the words 'lift shop' in respect of online search results using search engine optimisation practices did not constitute 'use' in a trademark context. The decision highlights the importance of proving 'use' in the trademark context in order to establish infringement.

Easy Living Home Elevators Pty Ltd and Lift Shop Pty Ltd are competitors in the supply of customised elevators and disability platform elevators. Lift Shop is the owner of a composite mark registered in respect of elevators (Australian trademark No 1198409):

In 2012 Lift Shop commenced proceedings against Easy Living alleging that Easy Living had infringed one of its registered trademarks, engaged in misleading and deceptive conduct in breach of the Australian Consumer Law and committed the common law tort of passing off in respect of Easy Living's use of the words 'lift shop' on its website and in search engine results influenced by Easy Living's search engine optimisation practices.

On September 10 2013 the Federal Court of Australia held that Lift Shop had not made good its claims (Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd ([2013] FCA 900)). Among other things, Justice Buchanan held that Easy Living's use of the words 'lift shop' was descriptive and, therefore, did not satisfy the requirement of 'use' in order to establish trademark infringement.

Lift Shop appealed Justice Buchanan's decision. On June 20 2014 the Full Federal Court of Australia dismissed Lift Shop's appeal. Justices Besanko, Yates and Mortimer affirmed Justice Buchanan's decision and found that Easy Living had not used the words 'lift shop' "as a trademark" insofar as Easy Living's search engine results were concerned. The Full Court found that the search terms 'lift shop' would have been understood by internet users as referring to the character of Easy Living's business - namely, the supply of elevators.

In order to prove trademark infringement under Section 120 of the Trademarks Act 1995 (Cth), a trademark owner must prove that the alleged infringer used the impugned mark "as a trademark". 'Use' in a trademark context is likely to be established if an impugned mark is used as a 'badge of origin' to distinguish an alleged infringer's goods and services with those of other traders, notwithstanding that the impugned mark may possess descriptive elements.

In the present case, the Full Federal Court found that when considered objectively, Easy Living's use of the words 'lift shop' in the title of its web page did not function to distinguish its goods or services from those of other traders.

Lisa Ritson and Ben Teeger, Ashurst Australia, Sydney