On 30 October 2018 the Australian Federal Circuit Court handed down the decision of Google LLC v Weeks  FCCA 3150 (30 October 2018), which in which the court found that “Google” is a “well-known mark”. The concept of “well-known marks” and their recognition is provided for by Article 6bis of the Paris Convention for the Protection of Industrial Property (1967), and referenced (without definition) within section 120 (3) of the Australian Trade Marks Act 1990. Decisions on well-known marks in Australia are very rare, and usually only considered at the stage of interlocutory injunctions.
A person named Jason Weeks, who did not participate in the proceedings, had registered the business names “Google LLC” and “Google Legacy”. Mr Weeks was also the owner of the domain name <googlefoundation.com.au>.
Google commenced proceedings against Mr Weeks for trade mark infringement, contraventions of the Australian Consumer Law relating to misleading and deceptive conduct, and passing off. Google sought the transfer of the business name “Google LLC”, cancellation of the business name “Google Legacy”, deregistration of the domain name, and associated injunctive relief. Supporting this was Google’s 35
“Google”-related trade marks registered on the Australian trade mark register in various classes, as well as evidence of what can properly be regarded as Google’s colossal global reputation. Her Honour Judge Baird found that Google has an “ubiquitous goodwill and reputation” in the Google trade marks, and they were “well-known” as at the priority date of 18 June 2015.
Her Honour then considered Christian v Societe Des Produits Nestle SA (No.2)  FCAFC 153; (2016) 115 IPR 421 and the earliest Anglo-Commonwealth decision on domain name cyber-squatting, British Telecommunications Plc v One in a Million Ltd  EWCA Civ 1272; (1998) 42 IPR 289. This second decision, from the UK Court of Appeal, expressly regarded domain name squatting as evidence that a respondent is “equipped with or is intending to equip another with an instrument of fraud”.
Accordingly, Her Honour noted, “…I am satisfied that:
- (a) the acts of registering and holding each of the business names and the domain name in his name and under his ABN;
- (b) the uses of the name Google on the Facebook Accounts that appeared to be associated with him to which I have referred to above; and
- (c) his representations of relationships and history with Google on pages of those Accounts,
establish that Mr Weeks has used, and has in his hands, instruments available to him, which are consistent with an intention to use as badges of origin names which include predominantly Google, and so has equipped himself with an instrument of fraud in the sense identified by the Full Court in Christian.”
The significant practical issue in this matter however was the vexed issue of service upon the respondent. Service upon Mr Weeks was very complicated, because there was no evidence of his address, despite the efforts of a private investigator and what looks like an enormous amount of necessary fossicking about by Google’s lawyers. As Her Honour noted, “The evidence shows that in relation to at least 8 Facebook Accounts, 2 domain names, and at the email address email@example.com, each of which include the name Google, Mr Weeks has made various claims of proprietorship, origination and business association with the Applicant, Google . The recent deletion and deactivation of at least 3 of the Facebook Accounts associated with Mr Weeks show that Mr Weeks continues to be active on social media, although it is not clear at what physical address, if any, he resides.” Google’s lawyers were able to provide to the court an image that at least one of these communications was recorded as “seen” by the recipient, and also noted that after service of the court documents, various Facebook accounts apparently operated by Mr Weeks were shut down. This was enough to satisfy Her Honour that service had been properly effected.