Trademark Searches

Don’t Upset A Big Player Like Airbnb When Applying

On 23 March 2021, Airtasker (ART.ASX) listed on the Australian Stock Exchange, and started just above a dollar a share. However, the company’s acceleration has been hampered by trademark opposition in the European Union, covering over 28 countries.

Airbnb opposed Airtasker’s Trademark application before the European Union Trademark Office, alleging that Airtasker has “traded off” Airbnb’s well-known trademark, because of using the same prefix “Air”.

This allegation aligns well with our quite common advice of the risks posed by start-ups and existing businesses conducting their own trademark searches and thinking that they are clear because they found that there were zero results for the exact same name, or that their name is, in their eyes, different.

For the reasons in this case, an assessment of all trademarks needs to be conducted by an Attorney because of their knowledge of the Trademark Act rules, and other areas of law which can bring down a trademark, such as “passing off” and the provisions of the Australian Competition and Consumer Act (“The Australian Consumer Law”).

Airbnb argued that the Airbnb trademark is globally famous, and that Airtasker’s adoption of the prefix “Air” is aimed at drawing a business association with the famous Airbnb trademark. They also argued that customers are likely to think that Airtasker is a sub-brand offered by Airbnb, tasked with special services that complement Airbnb’s accommodation services.

Oppositions can go for 1-2 years, and should be avoided, if possible. In most countries (including Australia), an Opposition period is available after the relevant Trademark Office has accepted a trademark.

Even if they lose an opposition, Airbnb will have the option to appeal. Defending an opposition in Australia can generally cost $80,000-200,000, or even more, depending on the duration of the opposition, complexities and time needed to optimise the case. And, of course, Airbnb also has the option of taking Court action, which is much more costly for the defendant –  $600,000+, even for an easy case.

Please contact our firm if you need trademark litigation searches conducted by one of our Attorneys. This is vital to check whether litigation could occur. Our Trademark searches minimise your risks, and provide an independent opinion on the view or ruling of the Trademark Office, which can be overturned at Opposition or by the Courts.

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