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

from the likelihood-of-confusion dept

Mon, Jan 10th 2011 5:03am — Mike Masnick

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.

Thank you for reading this Techdirt post. With so many things competing for everyone’s attention these days, we really appreciate you giving us your time. We work hard every day to put quality content out there for our community.

Techdirt is one of the few remaining truly independent media outlets. We do not have a giant corporation behind us, and we rely heavily on our community to support us, in an age when advertisers are increasingly uninterested in sponsoring small, independent sites — especially a site like ours that is unwilling to pull punches in its reporting and analysis.

While other websites have resorted to paywalls, registration requirements, and increasingly annoying/intrusive advertising, we have always kept Techdirt open and available to anyone. But in order to continue doing so, we need your support. We offer a variety of ways for our readers to support us, from direct donations to special subscriptions and cool merchandise — and every little bit helps. Thank you.

–The Techdirt Team

Filed Under: australia, trademark
Companies: groupon

29 Comments

If you liked this post, you may also be interested in...

Reader Comments

Subscribe: RSS

View by: Time | Thread

Dano, 10 Jan 2011 @ 5:38am

^^^^^ I love reading techdirt.
[ link to this | view in thread ]
John D (profile), 10 Jan 2011 @ 6:33am

Sad
It's a sad state of affairs when laws like this are properly applied so infrequently that it warrants attention.
[ link to this | view in thread ]
average_joe (profile), 10 Jan 2011 @ 6:38am

I bet this is the nicest thing you say about IP all week. :)
[ link to this | view in thread ]
mattarse (profile), 10 Jan 2011 @ 6:43am

Thanks for posting this - I forget sometimes that there are instances where these laws make sense.
[ link to this | view in thread ]
Anonymous Coward, 10 Jan 2011 @ 7:04am

what trademark
Groupon has the trademark in the US. Not Australia.

US trademark law doesn't apply worldwide.
[ link to this | view in thread ]
Kingster (profile), 10 Jan 2011 @ 7:20am

Re:
I bet that this is one of the most intelligent things you say all week.
[ link to this | view in thread ]
average_joe (profile), 10 Jan 2011 @ 7:36am

Re: Re:
What's your problem?
[ link to this | view in thread ]
Dark Helmet (profile), 10 Jan 2011 @ 7:50am

Re: Re: Re:
I bet this is your shortest comment all week....
[ link to this | view in thread ]
average_joe (profile), 10 Jan 2011 @ 8:02am

Re: Re: Re: Re:
You're wrong. :)
[ link to this | view in thread ]
The eejit (profile), 10 Jan 2011 @ 8:11am

Re: what trademark
But this is proper application of trademark law under the TRIPS agreeement, much derided as it is.
[ link to this | view in thread ]
Anonymous Coward, 10 Jan 2011 @ 8:11am

Does Groupon operate in Australia?
[ link to this | view in thread ]
Alex Daniels (profile), 10 Jan 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.
[ link to this | view in thread ]
Anonymous Coward, 10 Jan 2011 @ 8:47am

Re: Re: Re: Re: Re:
Ha
[ link to this | view in thread ]
Jeffry Houser (profile), 10 Jan 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].
[ link to this | view in thread ]
Dementia (profile), 10 Jan 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.
[ link to this | view in thread ]
Anonymous Coward, 10 Jan 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?
[ link to this | view in thread ]
Ron Rezendes (profile), 10 Jan 2011 @ 11:54am

Re: Re: Re: Re: Re: Re:
!
[ link to this | view in thread ]
Ron Rezendes (profile), 10 Jan 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.
[ link to this | view in thread ]
JP, 10 Jan 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.
[ link to this | view in thread ]
Lawrence D'Oliveiro, 10 Jan 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.
[ link to this | view in thread ]
G Thompson (profile), 11 Jan 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.
[ link to this | view in thread ]
G Thompson (profile), 11 Jan 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.
[ link to this | view in thread ]
allthedeals.com.au, 19 Jan 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"
[ link to this | view in thread ]
Vouchersin (profile), 15 Nov 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.
[ link to this | view in thread ]
Baby Steals, 14 Mar 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
[ link to this | view in thread ]
Sex Toys Daily Deals, 5 Sep 2012 @ 7:05pm

Sex Toys Daily Deals
We are up and running and providing the best daily deals on quality adult products
[ link to this | view in thread ]
Discount Sex Toys Online, 5 Sep 2012 @ 7:07pm

Discount Sex Toys Online
Wow great write up keep it up
[ link to this | view in thread ]
Vladimir, 16 Apr 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.
[ link to this | view in thread ]
L'ETOILE ELITE, 1 Mar 2016 @ 3:47am

keratin treatment sydney
Letoile Australia is the best Redken Hair Hair Salon located in the heart of Sydney CBD, offering exclusive Hair & Body treatments including massage & waxing.permanent hair extensions sydney
[ link to this | view in thread ]