Australia has recently maintained the long tradition of denying traders the right to appropriate geographical place names for their exclusive use. In Kosciuszko Thredbo Pty Limited v ThredboNet Marketing Pty Limited [2014] FCAFC 87, Kosciuszko Thredbo, the operators of the popular Australian ski resort Thredbo, attempted to stop ThredboNet from using the name, suing on a plethora of different grounds.
Both the lower court and appeals court were adamant that third parties were entitled to use the geographical name. In order to be successful, the applicants had to show that the use of the word Thredbo would be likely to mislead or deceive consumers into believing that there is some relevant connection between the parties. Mere confusion in the mind of the consumer did not amount to misleading or deceptive conduct.
Further the court held: "The respondents sufficiently distinguished their websites from the business of the appellants by their use of disclaimers and their offers of supply that were limited to some accommodation. ... In our opinion, the get-up and appearance of the respondents' websites were not such as would lead the ordinary reasonable consumer into a belief that they were associated with the appellants' businesses. ... the ordinary reasonable consumer looking for holiday accommodation at a resort such as Thredbo would be careful about making a selection of the provider, the accommodation and the price."
The net result is that the legitimate competitor, operating a legitimate business, is clearly entitled to make use of geographic place names in their operations.
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Peter Treloar |
Shelston IP
Level 21, 60 Margaret Street
Sydney NSW 2000, Australia
Tel: +61 2 9777 1111
Fax: +61 2 9241 4666
