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Mallesons leads on internet law future

Mallesons Stephen Jaques has acted for Mantra Group, Australia's second largest accommodation provider, in a landmark case which finally clarifies the law in relation to internet marketing and…

Mallesons Stephen Jaques has acted for Mantra Group, Australia's second largest accommodation provider, in a landmark case which finally clarifies the law in relation to internet marketing and trademarks.

The Federal Court found Stephen Andrew Grant and Tailly Pty Ltd (the respondents) guilty of establishing misleading websites to attract bookings for their accommodation business, which used Mantra's trademarks, with the aim of confusing consumers.

"It was a fascinating case to be involved in because it involved previously unrecognised internet marketing issues," Mallesons partner John Swinson told Lawyers Weekly.

The respondents, who rented and sublet 39 rooms in the Gold Coast's Circle on Cavill building, created numerous websites which incorporated Mantra's trademarks, or variations thereof, to attract holidaymakers.

According to Swinson, many people who booked through the respondents were unaware that they were not booking through Mantra.

"People would book a room at Circle on Cavill, turn up to reception and Mantra wouldn't know anything about them," said Swinson.

"People were getting terribly upset."

And according to Swinson, the Federal Court judgment was very clear and left no room for doubt on whether the respondents' actions amounted to infringement of trademarks.

"No case in Australia has ever looked at how a website is analysed from a trademarking point of view. The judge took a very broad view of this issue and very broad remedies," he said.

"It was a clear win. There was no doubt in what the judge said. We were given every single remedy we asked for. Up until now there was no law supporting this."

The respondents were ordered to transfer to Mantra the registration of their Circle on Cavill domain names and other domain names which resemble the Circle on Cavill trademarks.

"This sets a strong precedent that can be used to help clean up the industry. It sends a message to all the other people doing it."

The Court also granted a permanent injunction restraining the respondents from using the Circle on Cavill and other Mantra trademarks, and ordered them to pay all profits made from bookings sourced via the infringing websites to Mantra.

"We brought this case because people were being misled," said Swinson.

"We now have a clear judgment directly relevant to internet marketing."

- Claire Chaffey

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