Arnold Bloch Liebler will defend e-retailer Kogan against allegations by competitor Catch Group that it is violating its “catch” trademarks and the consumer law through sponsored links on Google driven by phrases using the word “catch”.
Kogan filed an appointment of lawyer notice with the court this week.
Catch, which holds several trademarks that use the word “catch” as a “dominant cognitive clue”, sued Kogan in May over its uses of “catch” terms to drive traffic to its domain for mobile services, catchmobile.com.au. Through Google AdWords, advertisers bid on keywords which, when searched on Google, result in their sponsored links featuring prominently in the search results.
“A search of Google for ‘Catch Connect’, ‘Catch Mobile’ or ‘Catch Mobile Plans’ resulted in the identification of a sponsored link to the Kogan Catch Mobile Domain, which was sponsored by one or more of the respondents,” the statement of claim said.
Catch claims the sponsored links violate the Australian Consumer Law by misrepresenting that Kogan’s products are Catch’s or are somehow related to or endorsed by Catch.
Catch is represented by IP heavyweight K&L Gates.
It is seeking damages for the alleged violations of the consumer law and passing off and an order requiring Kogan to cancel its domains and withdraw its trademark applications. It also asked the court for an interlocutory order barring the sponsored links on Google, any use of the “catch” trademarks as well as the deactivation of the allegedly infringing domains. However, an earlier hearing on the interlocutory application was adjourned indefinitely.
A case management has been scheduled for September 21 before Justice Bernard Murphy.
In February, Catch partnered with Optus to launch Catch Connect, a mobile phone product, at the domain name catchconnect.com.au. Since at least May 2018, Kogan has registered the site catchmobile.com.au and has used it to sell and promote phone-related products and services, Catch claims.
By registering the mobile website, as well as catchinsurance.com.au and catchloans.com.au, Kogan has violated its “catch” trademarks, in which it has developed substantial goodwill in Australia with regard to retail services, and attempted to pass off its products as somehow related to Catch’s, the statement of claims alleges.
It also says Kogan violated its trademark by seeking to trademark the terms “Catch Mobile”, “Catch A Mobile Deal”, “catchmobile.com.au”, “Catch Insurance”, “catchinsurance.com.au”, “Catch Loans”, “Catch” and “Catch by Kogan”.
Catch and Kogan are major competitors in the market for online retail deals. Catch says Kogan’s initial public offering prospectus identified Catch as one of the top online retailers “in terms of both internet traffic and generating more Google search queries than any competitor.”
The Google Play and iTunes websites describe “Catch” as “Australia’s number one online shopping destination” for deals on brands and discount prices. Catch, which formerly operated the catchoftheday.com site, now operates through catch.com.au.
Kogan, which was founded by so-called serial entrepreneur Ruslan Kogan, is a fast-growing online outpost for a range of affordable products. It acquired Dick Smith Holdings’ online business in 2016 and went public later that year.
Catch is represented by Chris Round from K&L Gates.
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