The operators of the Thredbo ski resort (KT) sued ThredboNet, which managed holiday rentals in the same area.
KT alleged that ThredboNet’s conduct in registering domain names, company names and business names consisting of or containing “Thredbo” constituted misleading or deceptive conduct, passing off of KT’s business, and was a breach of subleases entered into between KT and ThredboNet.
THE MEANING OF THREDBO
KT operated a well known ski result under the name Thredbo, and developed the “Thredbo Village”. KT’s predecessor in title had operated Thredbo Village since around 1957.
Thredbo was a name of Aboriginal origin, and references to the geographic locality Thredbo as early as 1907 were quite common.
The key issue was whether the geographic descriptor “Thredbo” had taken on a secondary meaning such that KT could stop ThredboNet’s use of Thredbo.
The court considered that the case law established that a geographic name with a relevant current or future connection to the goods/services is unlikely to be prima facie distinctive, and that acquired distinctiveness had only been made out in rare cases.
The court cited Kitto J in Clark Equipment: "[a] geographical name, when used as a trade mark for a particular category of goods, may be saved by the nature of the goods or by some other circumstances from carrying its prima facie geographical signification [for example, where] by reason of user or other circumstances it has come to possess, when used in respect of the relevant goods, a distinctiveness in fact which eclipses its primary signification”.
There was no secondary meaning in Thredbo because KT did not “fulfil the special requirements to establish exclusivity in the geographic name” (it is arguable that this places a higher onus than the test in Clark Equipment), and as there was no evidence from consumers “to suggest that the public identifies ‘Thredbo’ as equating to the Thredbo Resort or Village”.
The court found that ThredboNet had not engaged in misleading or deceptive conduct in respect of the domain names, the slogans, the get-up of the websites or the Facebook page, except in connection with use of "my Thredbo".
There was some evidence of confusion between the businesses but this was caused by the nature of the word itself, not ThredboNet's conduct. The court referred to the clear policy in relation to words required for common use: “[t]he risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words …”.(Hornsby Building Information Centre)
Distinct issues were raised by ThredboNet’s use of “My Thredbo”. ThredboNet’s customers who booked online were taken to this site through a link provided via email. Given that KT had widely promoted its “My Thredbo” slogan, and that ThredboNet made “visible and obvious” use of My Thredbo, this conduct was considered misleading or deceptive. The use of “Our Thredbo” by ThredboNet was – on the other hand – use of a mark sufficiently different from KT’s “My Thredbo” slogan, and merely constituted “legitimate competition”.
KT’s claim regarding breach of sublease also failed because the term restraining use of “Thredbo” was deemed an unreasonable restraint of trade and therefore invalid.
There is more to come in this battle, as KT has appealed the decision to the Full Federal Court, and there are also opposition proceedings filed by ThredboNet as against KT’s application to register its THREDBO & Device mark.
In the meantime, the decision serves as a reminder of the difficulties in enforcing rights in a geographic name, even if the name has been used and promoted for many years, and even where there are instances of confusion.
This article was originally published in the INTA Bulletin on 15 August 2013. The decision is available here.