Real Estate Franchisors – Protecting your Intellectual Property

April, 2016

By Greg Thomas, Special Counsel, and Christopher Chin, Lawyer

The goodwill of any Real Estate Franchise is substantially tied to the intellectual property used in the network. This typically includes trade marks for the brand, logos and slogans of the network. It is therefore no surprise that Franchise Agreements contain detailed clauses dealing with the ownership, grant and use of such intellectual property.

The recent judgment in Harcourts WA Pty Ltd v Roy Weston Nominees Pty Ltd (No 4) [2016] FCA 138 dealt with a dispute around the entitlement to use the name “Roy Weston” (a real estate brand in Western Australia) as a trade mark.

The proceeding involved:

The dispute arose in the course of Harcourts WA’s rebranding in 2007 of the franchise network from “Roy Weston” to “Harcourts”.

Key aspects of the decision are as follows.

Alleged non-use of the “Roy Weston” trade mark

RWN applied to remove the “Roy Weston” trade mark for alleged non-use for a continuous period of 3 years pursuant to the Trade Marks Act 1995 (Cth) (TMA).

Importantly, the Court highlighted that:

The Court determined that during the alleged non-use period, Harcourts WA had:

Each instance was sufficient to constitute usage of the “Roy Weston” trade mark in good faith under the TMA.

Although the evidence on usage was slight, the Court also found that this was not enough to constitute an abandonment of the use of the name “Roy Weston”.

Ownership and infringement of the “Roy Weston” trade mark

Further, the Court found that:

Cancellation of RWN’s trade marks

The Court also found that RWN’s trade marks should be removed as:

Entitlement to use company name

The Court accepted that RWN was entitled to use its company name, however, RWN went well beyond use of its own company name and engaged, and continued to engage in, use of a range of other marks which infringe Harcourts WA’s trade mark for “Roy Weston”.

Key takeaways

This case highlights the importance for Real Estate Franchisors to:

Contact Mills Oakley

For more information, please contact:

greg-thomas

Greg Thomas
Special Counsel
T: +61 3 9605 0040
E: gthomas@millsoakley.com.au

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