The battle of the Groupon trademark in Australia demonstrates the importance of claiming and protecting your brand name and domain name internationally, if you think your business has some potential out of the Aussie shores. Groupon learnt the hard way about the potential costs involved when you are behind the mark in letting someone else get in first.
After the initial startling success of the groupon daily deals business model in the US, an Aussie daily deals site saw an opportunity to grab the name in the Australian market. By the time Groupon thought of expanding its protection to Australia – it was too late – Scoopon had scooped up the groupon.com.au domain, the company name “Groupon Pty Limited” and had applied for the Groupon trademark. In fact Scoopon’s trademark application in Australia was made a mere 5 days before Groupon’s application – but in trade mark law it’s all about timing!
In early January, Groupon CEO Andrew Mason wrote about their issues on the company blog. “This is a classic case of domain squatting – an unfortunate reality of the Internet business. As Groupon became internationally known, opportunistic domain squatters around the world started to buy local Groupon domain names, thinking that we’d eventually be forced to buy them at an insane price.”
It has been suggested that at one point, Groupon had offered more than $280k to get the domain name back. But in the end Groupon decided to take to the courts to sort out the saga – filing cases in the US, New Zealand and Australia.
After a bit of legal tousling, the parties finally settled out of court – with Scoopon taking an undisclosed settlement in return for handing over the domain name and company name, and withdrawing its trademark application. Rumour has it that the final sum was well in excess of the earlier $280k discussed amount…
Groupon Inc. has now received registration approval from IP Australia for the trademark GROUPON, and it now holds the Australian company name and domain name www.groupon.com.au.
And Scoopon? Well with the backing of a couple of consortium of investors that came on board they would appear to be well placed to go head to head with Groupon in the daily deals market in Australia.
The moral of the story? If you don’t want to lose your business name and all that comes with it nowadays you need to be looking now at registering your trademarks in any country you may wish to trade in – so it doesn’t cost you in the long run.
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If you would like advice about registering your trademark, call us on 02 8006 0830 or send us an email enquiry to [email protected] and we will organise a time to talk with you about your mark to answer all of the questions you might have.
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