Catch Group says that Kogan.com has agreed to not use a number of domain names, including catchmobile.com.au, catchloans.com.au, and catchinsurance.com.au, until legal action relating to a number of ‘Catch’ trademarks is resolved.
Catch Group operates a number of sites including catch.com.au and Scoopon.com.au. In mid-2017 Catch Group rebranded from Catch of the Day to Catch and began operating catch.com.au. In February 2018 the company launched Catch Connect: A telco brand that offers prepaid services on the Optus network.
The company on 24 May launched legal action against the ASX-listed Kogan alleging trademark infringement.
Since at least January 2018, Kogan has owned the catchmobile.com.au domain. Since at least March this year, it has been the registered owner of catchinsurance.com.au and catchloans.com.au.
When it operated, catchmobile.com.au had the slogans “Catch Mobile” and “Catch a Mobile Deal” with a link through to Kogan’s own telecommunications services (offered on Vodafone’s network).
Kogan on 1 March this year lodged applications for a range of trademarks including Catch Insurance, Catch Loans and Catch Mobile. The retailer also lodged a trademark application for 'Catch a Mobile Deal' on the same day. All four applications are currently being considered by IP Australia.
Last year in August Catch Group lodged trademark applications for Catch Mobile and Catch Insurance. Kogan on 15 April indicated its intention to oppose the Catch Mobile application; it has not lodged an intention to oppose Catch Insurance, however.
Court documents filed with the Victorian registry of the Federal Court reveal that Catch has accused Kogan of buying AdWords that link to the ‘Kogan Catch Mobile Products and Services’ (i.e. catchmobile.com.au) for search terms including “catch connect”, “catch mobile” and “catch mobile plans”.
“Almost everyone knows who Catch is, and we have worked hard to deliver a market leading phone plan offering for consumers,” said Nati Harpaz, CEO of Catch Group.
“Nearly one in seven Australians have shopped with us since 2006, and our customer base only continues to grow.”
Catch Group said that Kogan on 30 May agreed to cease using the catchmobile.com.au domain and any of the disputed “Catch” brand terms until the legal action is resolved.
Kogan declined to comment. A spokesperson indicated that the retailer would not comment on an action it believed would not have a material impact on its operations.
A hearing had originally been fixed for 31 May but has been adjourned.
Justice North ordered that Kogan by 13 July file and serve its defence and any cross-claim. The matter will be relisted for a case management hearing at a date to be fixed.