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E-commerce

Catch sues Kogan over trade mark infringement

Two of Australia’s leading online retailers by revenue, Catch Group and Kogan.com, are locked in a legal dispute over efforts to sell cheap mobile phone plans.

Catch Group last week filed an application for relief in the Federal Court of Australia, accusing Kogan of infringing on its trade mark.

Catch in February launched Catch Connect, a new vertical that offers cheap prepaid mobile phone plans in partnership with Optus.

The move put it in direct competition with Kogan, which has been offering mobile phone plans to customers through a partnership with Vodafone since 2015.

According to a statement from Catch, Kogan acquired the licence to the domain name ‘catchmobile.com.au’ amongst others and applied for several trade mark applications that incorporate the word ‘Catch’, apparently in an effort to redirect customers who use the search term ‘Catch’ to its own offerings.

Catch sells its mobile services under the domain name ‘catchconnect.com.au’.

“Almost everyone knows who Catch is, and we have worked hard to deliver a market leading phone plan offering for consumers,” Catch Group CEO Nati Harpaz said in a statement shared with Internet Retailing today.

“Nearly one in seven Australians have shopped with us since 2006, and our customer base only continues to grow,” he added.

According to the statement, Catch has accepted voluntary undertakings from Kogan to cease using the ‘catchmobile.com.au’ domain and any disputed ‘Catch’ brand terms, pending determination of proceedings.

It is seeking to restrain Kogan from using any sign, which it considers infringes its intellectual property rights.

Internet Retailing attempted to reach Kogan for comment on this story, but was told by its PR agency that it “does not comment” on immaterial matters.

What you need to know about Google AdWords and IP

Google in 2013 said it would not prevent competitors from bidding on a third party’s business name or registered trade mark, according to a blog post written by LegalVision trademark lawyer, Daniel Smith.

Smith noted that the policy was tested in the Australian courts in 2016, when credit reference agency Veda brought a case against a competitor, Malouf, which bid on Veda’s trade marked keywords through Google AdWords and displayed Veda’s trade mark in its ads.

Veda argued that the conduct amounted to misleading and deceptive conduct under the Australian Consumer Law.

However, the judge in the case found that competing businesses are legally entitled to buy or bid on the same keywords as each other, even if they are trade marked, as long as they are not visible to the public.

“As laws continue to develop around the use of Google AdWords, the Veda case provides a useful framework for other businesses using this marketing tool.” Smith writes.

“Where you use another business’ trade marks, ensure that the keyword you select is hidden from public view, or is descriptive in nature,” he notes.

“Following his Honour’s judgment in Veda, you may be liable for trade mark infringement and in breach of the ACL if you display keywords that wrongfully imply a commercial relationship between the two entities.”

Nati Harpaz is the chairman of Octomedia, Internet Retailing’s parent company.

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