By Warren Scott, Partner
It is a frightening realisation for property developers and managers that they may not be able to prevent unauthorised third parties from using the name of their developments. In particular, where the name is descriptive or incorporates a geographical location it could be difficult to restrict use of the same or similar names by unauthorised parties. As Australia experiences an explosion in residential developments, and we witness a growing trend for property developers to attach a name to a development, it is imperative that property developers and managers understand these limitations so that they can protect their brand from unauthorised use.
The issue is illustrated by the following decisions:
- The owners of Thredbo Alpine Village brought a misleading and deceptive conduct and passing off action against their competitor ‘ThredboNet’ in an attempt to prevent ‘ThredboNet’ from using the term ‘THREDBO’ to advertise accommodation services at the village. However, despite their significant and extensive investment in the development and promotion of the Thredbo Alpine Village, the owners were unable to show that they had monopoly rights in the geographical term ‘THREDBO’ and their action was unsuccessful.
- Marriott Worldwide Corporation (‘MWC’) operates a chain of hotels using the term ‘FAIRFIELD’. MWC sought trade mark registration for the term ‘FAIRFIELD’ for business and hotel services. The application was rejected by IP Australia including due to the term ‘FAIRFIELD’ being the name of a city and electoral district in NSW as well as suburbs in Queensland and Victoria. Other traders should be able to legitimately use the term ‘FAIRFIELD’ in relation to similar services. Although MWC sought to overcome the objection by limiting its monopoly to exclude ‘…services provided in or in relation to any geographic location with the name Fairfield’, IP Australia considered this limitation did not overcome the grounds for rejection.
Mills Oakley recommends the brand created or associated with any real estate development does not include a geographical location.
However, she says, “It is possible to obtain trade mark protection for building names where the mark is non-descriptive and used in relation to specific goods and services. The registered trade mark can then form a basis to prevent unauthorised use.”
Such was the case for Mantra, who operate a resort and spa at the iconic ‘Q1’ building on the Gold Coast. Mantra applied for trade mark registrations for ‘Q1’, including for accommodation services. A third party opposed registration of the mark on the grounds that other persons should be able to use ‘Q1’ for accommodation services at the building and Mantra should not have exclusive rights to the term.
While the Federal Court found that a person could not obtain registration of a trade mark for a building name per se, in this instance the trade mark for ‘Q1’ was distinctive of the accommodation services being provided by Mantra for the building. The mark could therefore be registered and Mantra has an ongoing ability to restrict unauthorised parties from using ‘Q1’ for accommodation services.
Mills Oakley suggests that when establishing a new development, property developers and managers should consider conducting trade mark searches or filing trade mark applications to protect their rights from unauthorised use.
She says, “The practical implication of these decisions for property developers is that trade mark registration and ongoing brand management can maximise the branding investment made in a property development. However, as a general rule, careful consideration should be taken in selecting a name for your property development which is distinctive and does not include reference to a descriptive term or to a geographical location.”
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