Ballarat small business owner Paul Ballinger has spent two years battling real estate listing giant REA Group over his right to use a few simple words and says he has no regrets despite the process costing tens of thousands.
"If you've got a business and a trade mark, you've got to be prepared to stand up for it," the owner of Real Estate Home Loans said.
Mr Ballinger has owned and operated his regional mortgage broking business for close to 20 years. The company trade marked its logo - a house with the phrasing "Real Estate Home Loans".
In 2017, REA Group lodged applications for two trade marks relating to its mortgage broking arm, "Realestate.com.au Home Loans". It applied to register its own logo with IP Australia, the federal government agency that administers intellectual property rights and legislation, as well as directly owning the wordmark for the brand.
Mr Ballinger was looking to expand his own business at the time, and news of the applications concerned him, given his belief the two brands were similar. He decided to object, initiating a process with the Australian Trade Marks Office that eventually cost his company $50,000. His business turns over $500,000 a year.
"The thought process was, 'We've just got to protect our position'," Mr Ballinger said.
He said Real Estate Home Loans tried to negotiate with REA Group ahead of time but claimed the company would not engage with offers to compromise.
In August, trade marks hearing officer Debrett Lyons decided the two companies' logos were not similar enough to confuse consumers and that REA Group was allowed to trademark its logo.
However, Mr Ballinger's objection to the company trademarking the words "realestate.com.au Home Loans," was accepted, with the decision noting the words were not distinct enough to the brand for REA Group to lay claim to ownership of them.
Mr Ballinger, whose company owns assets including the website "realestatehomeloans.com.au", saw that decision as a hard-fought win to protect his own brand.
However, the decision has no impact on how REA Group runs its branding or on what it calls its home loans offer.
Mr Ballinger said while he did not regret taking on the REA Group his experience showed even having a trade mark was no guarantee of protection.
"I registered the trade mark 20 years ago on my own. What I own is the logo with that terminology, that's where it gets very frustrating. You pay trade mark office fees, you have to renew every 10 years, but it doesn't automatically protect you. If there is an issue, you have to be prepared to spend the money to protect your position," Mr Ballinger said.
REA Group declined to comment on its applications for trade marks or the results of the case.
Objections take at least a year
Objecting to a trademark application takes at least 12 months and almost always requires assistance from intellectual property lawyers.
IP Australia said the objections process is designed to give both parties to an intellectual property dispute the chance to organise evidence and prepare their arguments before a decision is made.
"While I understand the opposition process can be confronting for small businesses, it is a more cost effective and less stressful option than pursuing the matter through court. It is important to remember that only 2 per cent of all accepted trade mark applications ever get opposed," said Paula Adamson, general manager of the trademark and design group at IP Australia.
Mr Ballinger said the costs of fighting an infringement of a trademark in the general court system are significant and there should be a simpler way.
"You are talking possibly hundreds of thousands of dollars now [to fight a case]. It would have been good if there were a more cost-effective resolution system for this type of dispute."
- The Age