Use of descriptive words to improve search engine results no basis for infringement

In Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd ([2013] FCA 900, September 10 2013), the Federal Court has held that a competitor’s use of words similar to a registered trademark to improve its prominence in internet search results did not constitute trademark infringement. The court held the view that the words are descriptive, and dismissed allegations of misleading and deceptive conduct and passing off, finding that there was no indication of any association between the parties.

Lift Shop Pty Ltd and Easy Living Home Elevators Pty Ltd are fierce business competitors supplying customised elevators/lifts and disability platform elevators in Australia. Lift Shop commenced proceedings against Easy Living alleging that use of the words 'Lift Shop' and/or 'lift shop' on its website constituted infringement of its registered trademark (shown below). Lift Shop also alleged misleading and deceptive conduct in Australian Consumer Law and passing off. 

During 2011, Easy Living was interested in updating its website to increase its visibility to prospective consumers conducting internet searches using search engines such as Google, Yahoo! and Bing. In order to achieve this, Easy Living engaged the services of a firm called TopRankings to advise it on “search engine optimisation”.

TopRankings asked Easy Living to nominate the web addresses of its top five competitors, select keywords to “target” and draft a title for its website including the top five keywords selected. TopRankings provided a list of suggested keywords from which 'lift shop' was chosen. Easy Living’s home page was subsequently updated to include the phrase “we’re a lift shop in our 14th year”, as well as the words 'Lift Shop', in the website’s title and keywords. The use of 'Lift Shop' and/or 'lift shop' in the title, home page and as a keyword had the desired effect of elevating their business in subsequent searches.

Search results displayed use in the following forms:

"Easy Living Lifts | Home Elevators | Lift Shop – Lift Shop

www.easy-living.com.au
At Easy Living home elevators website you will find details on all of our lifts and home elevators here, which will help you achieve the easy living you deserve."

"Easy Living Lifts | Home Elevators | Lift Shop – Home passenger Lifts

www.easy-living.com.au/
At Easy Living home elevators website you will find details on all of our lifts and home elevators here, which will help you achieve the easy living you deserve."

The court found that uses of 'Lift Shop' by Easy Living were for the purposes of competition rather than association, and that uses of the term 'lift shop' were descriptive, rather than as a badge of origin. It had earlier been noted that several other businesses (not associated with either Lift Shop or Easy Living) were also identified in an internet search for 'lift shop'.

Interestingly, the court expressed the view that, had there been use of 'Lift Shop' as trademark, it would have found in favour of infringement. It did not accept Easy Living’s contentions that only the term 'liftshop' could be deceptively similar to the registered mark. It also expressed the view that “the accompanying features of the mark do not detract from the central significance of the word 'liftshop', nor from the fact that the term is naturally pronounced as two words, rather than one”.

In the present case, for the court it was relevant that Easy Living “did not set out to associate itself with Lift Shop, but set out to position itself to compete with the applicant in its own right by drawing the attention of potential customers to its own capacity to satisfy their requirements”. It may sometimes be a fine line, but in the present case the court concluded that Easy Living “was not seeking to profit from the applicant’s reputation. It was seeking to be chosen in its own right”.

Nathan Sinclair and Sean McManis, Shelston IP, Sydney