After recently reading a story about a company being sued for incorrect information displaying in Google ‘Open Graph’, it reminded me about an experience I had a couple of years ago, and I thought I would share with you now.
I worked for a long time and very hard to achieve the top ranking positions for a business for sale website we owned (BizListings.com.au). It took over 6 years to finally hit the #1 position for our biggest term! It was a long process, slowly dominating most terms within our niche, and then finally we hit the number 1 position for our main term.
Boom! Our traffic doubled over night. It was a great achievement!
Trademark Infringement Notice
Within 1 week of achieving our new rankings, we were slapped with a ‘Trademark Infringement’ notice from a law firm in North Sydney. We were scratching our heads wondering what the hell was going on!
As it turns out, the site which had previously been ranking in the number 1 position for our main term (they were now #2) was so pissed off, that filed a law suit claiming that I was infringing on their trademark ‘Australian Business for Sale’.
First of all, how on earth was a business allowed to trademark such a descriptive, generic and non-branded term? I was baffled!
Which brings me to my next point. Not once on our entire site did we include the search term ‘Australian Business for Sale’. Not in my content, not in my titles, not in my meta tags, absolutely nowhere! I was now even more confused and started thinking that maybe they sent this to the wrong business.
After calling the law firm directly, they let me know in no uncertain terms that this was no mistake. So, I responded directly via email prior to seeking legal advice.
Below I have detailed my initial response to their threatening email, which highlights some of their demands:
After completing a website audit on our site, we could not find the term ‘Australian Business for Sale’. Please provide evidence where our site uses this term, and please provide the evidence as to where we are claiming to be ‘Australian Business for Sale’?
FYI – Are you familiar with these other business for sale sites in Australia:
etc, etc, the list goes on.
All of these sites above use your trademarked name in their content, and some of these sites actually have your ‘trademark’ name in their domain names! Are you proceeding with legal action against all websites who use this very generic, descriptive term? If yes, (there would be thousands) then good luck with that. However, our site does not fall into that category.
Below in bold are your client’s demands, my response follows:
A)Cease and desist from using the name ‘Australian business for sale’ and any other similar name – Please provide evidence where we use this term on our site?
B) Remove the name ‘Australian business for sale’ from your website and remove any existing backlinks as well as company material containing this name – This term does not exist on our site or company material. Please provide evidence.
C) Undertake not to use the name ‘Australian business for sale’ in the future – We have never and will never brand our company using this generic term. That would defeat the purpose of ‘company branding’. Please provide the client with the following link to educate them about ‘company branding’ and how it works – http://en.wikipedia.org/wiki/Corporate_branding
D) Make an announcement on your website that neither direct, nor indirect relations exist between your company and our clients – I will not make announcement on my website due to the fact that there is no relation between our companies. Please provide evidence of this allegation.
1) The removal of any existing backlinks and all infringing content containing the words ‘Australian business for sale’, as well as your notification in writing that you have done so – As previously mentioned website owners do not have control over external links.
2) Names, addresses and other contact details of the distributor – Not Applicable
3) Pay a licensing fee in the amount of $2000 – No
4) Pay our clients cost of assertion of it’s rights – No
Below in bold are your client’s demands, my response follows:
‘Our client is concerned that your attempt to pass off your business as theirs is one which has already resulted in a loss to their business’
Please provide examples where we are ‘passing off’ as your clients business. Evidence is required.
‘There is undoubtedly confusion in the marketplace between our clients company and yours’
In who’s opinion? Did you take a poll? If so, please provide evidence and all contact information of poll participants.
‘Our client’s trademark and the term used by you are strikingly and deceptively similar’
We do not use this term on our site. Please provide evidence of our deception.
‘Your company generates the impression in the relevant public that it is a representative of our clients’
Please provide evidence how we generates this impression.
I can go on further, but I think you get the point. We have in no way infringed on your trademark name of ‘Australian Business for Sale’, according to the Australian Law.
As you can see by my reply, they really didn’t have a leg to stand on. It’s as if they did not even look at my site at all to see if I was in fact infringing on their trademark. I thought this would have been the first point of call for any law firm acting on behalf of a client. Confirming these accusations should have been the law firms first point of call prior to making contact with me.
After sending the above email to their lawyer, they responded with the following:
We do not want to discuss anything with you in response to your remarks stated below. Our client is the owner of a registered word trademark. Therefore we do not need to argue in relation to the distinctiveness of our clients’ mark. We simply ask you to declare, whether you comply with our requests or whether you decline to do so. If the latter is the case, then we are instructed to apply for an injunction on behalf of our client without any further notice to you.
So after politely informing them that we in fact did not include this term on our site, they simply ignored this rather valuable piece of information and instructed me to either comply with their requests, or proceed to fight it in court.
Time to Hire lawyer
After hiring a top notch IP Lawyers firm in Melbourne (Actuate IP), we discovered that as long as I wasn’t claiming to describe our business as ‘Australian Business for Sale’ (eg ‘Hi, welcome to Australian Business for Sale), and as long as I was only using it as a description (eg. ‘Are you looking for an Australian Business for Sale’), then we were breaking no laws and were not infringing on their trademark term. That being said, we didn’t have this term on our entire site.
So not only was their accusations incorrect, but if used as a description we can use this trademarked term.
We Didn’t Back Down
Our Lawyers proceeded to draft up our response and informed them that we would be fighting this full steam ahead!
Within 10 days of receiving our detailed response, they decided to not proceed with legal action, which was a very smart move on their behalf. They had no grounds to proceed and made themselves look rather foolish.
Unfortunately, this exercise cost us thousands of dollars in legal fees. I could have taken them to court to recoup my expenses, but decided to let it go. I seriously didn’t have the time.
In hindsight I wished I did end up taking them to court to make an example of them for what they did. They were very unprofessional and unethical with their actions.
Always hire a solicitor to handle your legal affairs. It will save you time and money in the long run.
by Denise O’Berry