How Trademark Law Is Supposed To Work: Groupon Sues Australian Clone That Tried To Squat Groupon Name

from the likelihood-of-confusion dept

While we've talked a lot about abusive trademark lawsuits that are more about attacking competitors or hindering speech, the core concept (which has since been significantly stretched) still does make some sense: it works as a form of consumer protection, to stop consumers from being fooled into believing, say, that Bob's Cola, is really Coca Cola -- a well known brand that they trust. When I saw a headline that Groupon had filed a lawsuit against a clone, I was worried that it would be an attack on a competitor (of which there are many). However, it appears that Groupon is still leaving most of the many, many clones out there alone. It's filed this particular lawsuit against Scoopon because the company tried to swipe the Groupon name in Australia. Not only did it register Groupon.com.au, it also registered its company name as Groupon Pty Limited and applied for the trademark on Groupon in Australia. That seems like a clear case of a company trying to confuse the public into believing it's the original Groupon, and a perfectly reasonable situation for using trademark law.


Reader Comments (rss)

(Flattened / Threaded)

  1.  
    identicon
    Dano, Jan 10th, 2011 @ 5:38am

    ^^^^^ I love reading techdirt.

     

    reply to this | link to this | view in thread ]

  2.  
    icon
    John D (profile), Jan 10th, 2011 @ 6:33am

    Sad

    It's a sad state of affairs when laws like this are properly applied so infrequently that it warrants attention.

     

    reply to this | link to this | view in thread ]

  3.  
    icon
    average_joe (profile), Jan 10th, 2011 @ 6:38am

    I bet this is the nicest thing you say about IP all week. :)

     

    reply to this | link to this | view in thread ]

  4.  
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    mattarse (profile), Jan 10th, 2011 @ 6:43am

    Thanks for posting this - I forget sometimes that there are instances where these laws make sense.

     

    reply to this | link to this | view in thread ]

  5.  
    identicon
    Anonymous Coward, Jan 10th, 2011 @ 7:04am

    what trademark

    Groupon has the trademark in the US. Not Australia.

    US trademark law doesn't apply worldwide.

     

    reply to this | link to this | view in thread ]

  6.  
    icon
    Kingster (profile), Jan 10th, 2011 @ 7:20am

    Re:

    I bet that this is one of the most intelligent things you say all week.

     

    reply to this | link to this | view in thread ]

  7.  
    icon
    average_joe (profile), Jan 10th, 2011 @ 7:36am

    Re: Re:

    What's your problem?

     

    reply to this | link to this | view in thread ]

  8.  
    icon
    Dark Helmet (profile), Jan 10th, 2011 @ 7:50am

    Re: Re: Re:

    I bet this is your shortest comment all week....

     

    reply to this | link to this | view in thread ]

  9.  
    icon
    average_joe (profile), Jan 10th, 2011 @ 8:02am

    Re: Re: Re: Re:

    You're wrong. :)

     

    reply to this | link to this | view in thread ]

  10.  
    icon
    The eejit (profile), Jan 10th, 2011 @ 8:11am

    Re: what trademark

    But this is proper application of trademark law under the TRIPS agreeement, much derided as it is.

     

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  11.  
    identicon
    Anonymous Coward, Jan 10th, 2011 @ 8:11am

    Does Groupon operate in Australia?

     

    reply to this | link to this | view in thread ]

  12.  
    icon
    Alex Daniels (profile), Jan 10th, 2011 @ 8:32am

    The problem is when all IP is lumped together in one senseless mega-category. The folks who defend the anti-competitive and censorship-happy effects of patent and copyright always take advantage of this misconception.

    Trademark, geographical indication signs and proper authorship attribution protect customers from being victims of a fraud and companies and artists from someone else abusing their hard-earned reputation.

     

    reply to this | link to this | view in thread ]

  13.  
    identicon
    Anonymous Coward, Jan 10th, 2011 @ 8:47am

    Re: Re: Re: Re: Re:

    Ha

     

    reply to this | link to this | view in thread ]

  14.  
    icon
    Jeffry Houser (profile), Jan 10th, 2011 @ 9:40am

    As others have said or alluded to...

    Isn't Trademark law supposed to be regional? That is why there can be a Joe's Diner in Boston, Connecticut, and New York all being completely separate businesses.

    If Groupon has no presence in Australia, it seems the other company is acting legitimately [as best I understand the law].

     

    reply to this | link to this | view in thread ]

  15.  
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    Dementia (profile), Jan 10th, 2011 @ 10:04am

    Re: what trademark

    it also registered its company name as Groupon Pty Limited and applied for the trademark on Groupon in Australia

    Reading comprehension is your friend.

     

    reply to this | link to this | view in thread ]

  16.  
    identicon
    Anonymous Coward, Jan 10th, 2011 @ 10:15am

    I still don't understand the appeal or lasting business sense of groupon:

    1. They have never offerred a "coupon" that is anywhere relevent to my needs. (I checked in about 25 times over three weeks.) The signal/noise ratio is therefore atrocious and not worth my time.

    2. They don't offer a service by which competitors can't do the same thing. I don't understand why Google or Microsoft can't emulate exactly what Groupon has done, and do it better?

     

    reply to this | link to this | view in thread ]

  17.  
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    Ron Rezendes (profile), Jan 10th, 2011 @ 11:54am

    Re: Re: Re: Re: Re: Re:

    !

     

    reply to this | link to this | view in thread ]

  18.  
    icon
    Ron Rezendes (profile), Jan 10th, 2011 @ 12:07pm

    Re:

    I don't wear pantyhose myself but they sure seem to sell a lot of them.

    1. Obviously Groupon is not for you, but apparently it works for thousands of others and therefore they seem to have a marketable product.

    2. Perhaps that's why Google made a play for Groupon which Groupon declined to be a part of.

     

    reply to this | link to this | view in thread ]

  19.  
    identicon
    JP, Jan 10th, 2011 @ 1:59pm

    But it's ok when it goes the other way?

    Naughty Australian company, using the same name.

    But what about the US company that is now the only company allowed to sell "Ugg" boots? A national treasure, the Ugg boot, but local manufacturers can only sell "sheepskin boots" now that a foreign company has "trademarked" them.

     

    reply to this | link to this | view in thread ]

  20.  
    identicon
    Lawrence D'Oliveiro, Jan 10th, 2011 @ 2:16pm

    Re: Re: Re: Re: Re: Re: Re: Re: Re: Re: Re: Re: Re: Re: Re: Re: Re: Re: Re: Re: Re: Re: Re: Re: Re: Re: Re: Re: Re: Re: Re: Re:

    You’re all weak.

     

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  21.  
    icon
    G Thompson (profile), Jan 11th, 2011 @ 12:45am

    Re: But it's ok when it goes the other way?

    That might be true in the legal sense, but no one in Australia gives a toss and EVERYONE still calls them ugg boots and sells them as Ugg boots. The USA (Warner Bros) discovered what Aussies think about Trademark law when they also tried this same crap about "Tassie Devil".

    Trademark is NOT Worldwide and is absolutely Regional. It is also specific to usage.

    A Proprietary Limited Company (PTY LTD) name is ONLY given within Australia if their is NO trademark dispute with already existing names within Australia. Our Corporation authority (ASIC) checks all IP matters before allowing a name to be used.

    Groupon (USA) has got the shits because they never thought to register either the name nor the IP within Australia. TRIPS has nothing to do with it. Groupon PTY LTD (Aust) are not in any way shape or form "Passing off" or diluting the USA "Groupon" trademark since Groupon (The USA version) Do NOT offer there services within the region that is Australia (or even NZ).

    The ONLY thing that Groupon (USA) could conceivably get in any court action is a promise that Groupon Pty Ltd would not enter into any markets elsewhere other than Australia. In the same way Groupon (USA) is now forbidden from operating in Australia.

    McDonalds (USA) had this same problem trying to prove that they owned the common name McDonalds in conjuntion with selling hamburgers. Guess what? They found in Melbourne that they don't. Campbell Soup (USA) found out the same thing In Brisbane.

    In other words, Huge multinational wannabe companies find out that they really don't have that much impact outside of there relevant trademark region and cannot bully tactic Aussie companies.

     

    reply to this | link to this | view in thread ]

  22.  
    icon
    G Thompson (profile), Jan 11th, 2011 @ 12:46am

    Re: But it's ok when it goes the other way?

    That might be true in the legal sense, but no one in Australia gives a toss and EVERYONE still calls them ugg boots and sells them as Ugg boots. The USA (Warner Bros) discovered what Aussies think about Trademark law when they also tried this same crap about "Tassie Devil".

    Trademark is NOT Worldwide and is absolutely Regional. It is also specific to usage.

    A Proprietary Limited Company (PTY LTD) name is ONLY given within Australia if their is NO trademark dispute with already existing names within Australia. Our Corporation authority (ASIC) checks all IP matters before allowing a name to be used.

    Groupon (USA) has got the shits because they never thought to register either the name nor the IP within Australia. TRIPS has nothing to do with it. Groupon PTY LTD (Aust) are not in any way shape or form "Passing off" or diluting the USA "Groupon" trademark since Groupon (The USA version) Do NOT offer there services within the region that is Australia (or even NZ).

    The ONLY thing that Groupon (USA) could conceivably get in any court action is a promise that Groupon Pty Ltd would not enter into any markets elsewhere other than Australia. In the same way Groupon (USA) is now forbidden from operating in Australia.

    McDonalds (USA) had this same problem trying to prove that they owned the common name McDonalds in conjuntion with selling hamburgers. Guess what? They found in Melbourne that they don't. Campbell Soup (USA) found out the same thing In Brisbane.

    In other words, Huge multinational wannabe companies find out that they really don't have that much impact outside of there relevant trademark region and cannot bully tactic Aussie companies.

     

    reply to this | link to this | view in thread ]

  23.  
    identicon
    allthedeals.com.au, Jan 19th, 2011 @ 1:00am

    Re:

    They want to! But pretty hard when someone has nabbed your domain name and registered your trademark!! They are currently collecting email addresses under the somewhat lame name "star deals"

     

    reply to this | link to this | view in thread ]

  24.  
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    Vouchersin (profile), Nov 15th, 2011 @ 8:02pm

    I wonder what happened with this case. Australia has a lot of daily deal sites and this provides users more flexibility. The business aspect of it must have some share of responsibility issues, particularly, trademark and IP.

     

    reply to this | link to this | view in thread ]

  25.  
    identicon
    Baby Steals, Mar 14th, 2012 @ 11:06am

    Baby Deals | Baby Coupons :: Your Daily 9am Steal

    Groupon Australia is still up and running a year later so I assume that it has prevailed

     

    reply to this | link to this | view in thread ]

  26.  
    identicon
    Sex Toys Daily Deals, Sep 5th, 2012 @ 7:05pm

    Sex Toys Daily Deals

    We are up and running and providing the best daily deals on quality adult products

     

    reply to this | link to this | view in thread ]

  27.  
    identicon
    Discount Sex Toys Online, Sep 5th, 2012 @ 7:07pm

    Discount Sex Toys Online

    Wow great write up keep it up

     

    reply to this | link to this | view in thread ]

  28.  
    identicon
    Vladimir, Apr 16th, 2013 @ 3:26pm

    DDDeals.co.uk

    UK's best Daily Deals in a single place - Holidays, Goods and UK Deals - all of them very easy to search and sort by different categories.

     

    reply to this | link to this | view in thread ]


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