Kosciuszko Thredbo Pty Limited v ThredboNet Marketing Pty Limited [2013] FCA 563

Kosciuszko Thredbo Pty Limited v ThredboNet Marketing Pty Limited [2013] FCA 563

The Court held that 'Thredbo' does not have a secondary meaning exclusive to the applicants; both parties can legitimately use the geographic name. The similarities between the respondents' websites and the applicants' did not amount to misleading or deceptive conduct or passing off, except for the use of the 'My Thredbo' phrase in the Genkan booking link, which was found to be misleading or deceptive under the ACL. The sublease clause prohibiting use of 'Thredbo' in any business was an unreasonable and invalid restraint of trade and could not be saved or read down. Evidence of consumer confusion was insufficient on its own to establish misleading or deceptive conduct.

Jurisdiction
Australia
Judgment Date
11 June 2013
Procedural Posture
Civil / Judgment After Trial
Outcome
Partly in favour of applicants (relief in respect of 'My Thredbo' Genkan link only); otherwise dismissed.
Legal Topics
['misleading or Deceptive Conduct' 'restraint of Trade' 'secondary Meaning in Geographic Names' 'passing Off' 'use of Domain Names' 'breach of Sublease']
['trade Practices' 'restrictive Covenants' 'intellectual Property'] ['misleading or Deceptive Conduct' 'restraint of Trade' 'secondary Meaning in Geographic Names' 'passing Off' 'use of Domain Names' 'breach of Sublease']

Case Brief

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Procedural Posture

Civil / Judgment After Trial

Legal Issues

  1. 1 ["Whether the word 'Thredbo' has acquired a secondary meaning such that it is distinctive of the applicants' business" "Whether respondents' use of 'Thredbo' in domain names and websites constitutes misleading or deceptive conduct or passing off" "Whether a clause in subleases prohibiting use of 'Thredbo' is an unreasonable restraint of trade" 'Whether confusion evidenced is sufficient to found misleading or deceptive conduct or passing off' "Whether the 'No Thredbo' clause can be read down to be reasonable"]

Ratio Decidendi

The Court held that 'Thredbo' does not have a secondary meaning exclusive to the applicants; both parties can legitimately use the geographic name. The similarities between the respondents' websites and the applicants' did not amount to misleading or deceptive conduct or passing off, except for the use of the 'My Thredbo' phrase in the Genkan booking link, which was found to be misleading or deceptive under the ACL. The sublease clause prohibiting use of 'Thredbo' in any business was an unreasonable and invalid restraint of trade and could not be saved or read down. Evidence of consumer confusion was insufficient on its own to establish misleading or deceptive conduct.

Court Disposition

Partly in favour of applicants (relief in respect of 'My Thredbo' Genkan link only); otherwise dismissed.

Orders

  • ["Proceeding adjourned to 17 June 2013 for parties to formulate agreed orders reflecting the judgment's findings." 'Costs reserved.']