Although ski season is long over and the odd 40 degree day has hit, the name ‘Thredbo’ is synonymous with skiing and boarding the slopes of Mount Kosciusko.
Despite this, most people are guilty of not recognising that Thredbo is a geographic location. It is not the ski resort itself. With this idea in mind, the ski resort (Kosciusko Thredbo) sort to stop others from using the name Thredbo.
Here is what you need to know.
The issue came to light in the Federal Court when Kosciusko Thredbo challenged ThredboNet Marketing Pty Ltd’s (ThredboNet) continual use of Thredbo as a domain name, on social media and on its website. ThredboNet is an online booking website that services accommodation in the Thredbo region.
The ski resort argued that ThredboNet’s use of Thredbo constituted passing off or at the very least was misleading or deceptive under the Australian Consumer Law. Although Thredbo’s challenge failed, it raises some pertinent questions about when trademarks can become registrable, especially in relation to 2 issues.
You cannot register a geographic trademark… or can you?
The Trademarks Act provides that geographical regions and names cannot be registered. There are obvious public policy reasons behind this notion. Notably, if you could trademark a geographic name then others in the region could not legally use this name, which would arguably be detrimental to fair trade. However, the issue becomes complex in circumstances such as the Thredbo case. As common use is a basis for the successful registration of a trademark.
Kosciusko Thredbo argues acquired distinctiveness.
A business’ name can become distinctive through repeated use of the name. Acquiring a trademark through constant use is the benefit of applying a thorough and broad marketing campaign. For example the clothing and footwear retailer Colorado has successfully trademarked Colorado, through acquired distinctiveness and Burger King has successfully trademarked the term ‘Whopper’. I don’t know about you but when you think of whopper you think of a burger rather than an indicator of size.
The question then follows of what images do you conjure up when you think of Thredbo? Like most people, I think of the ski resort rather than the geographic region. This begs the question as to why the Federal Court rejected Kosciusko Thredbo’s claim to the rights associated with the word Thredbo.
Federal Court rejects Kosciusko Thredbo’s challenge
The court acknowledged that a trader should be able to use a geographic name unless it has become distinctive of another trader’s good and services. The federal court reasoned that consumers would not be mislead when using the services of ThreboNet into thinking that they were dealing with the services of the ski resorts.
Central to the court’s reasoning was that consumers would be reasonably prudent when searching the internet and if they were misguided to ThredboNet they would realise their errors. The court found that the disclaimers on ThredboNet’s website were enough to defeat Kosciusko Thredbo’s claim.
This case once again highlights the essentiality of having effective legal documents on your website. Whilst the ski resort lost this challenge it is worth noting that over time, through a longer period of marketing, Kosciusko Thredbo may be able to trademark the name Thredbo. This would effectively limit the possibility for other traders to use it in the course trade.
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