'Schoolies' trade mark breaks free

Break Free Holidays has undertaken that it will no longer threaten legal proceedings against third parties who make use of the word 'Schoolies', in circumstances where Break Free Holidays has no right to do so.

"The Australian Competition and Consumer Commission has accepted court enforceable undertakings from Break Free Holidays for potentially misleading and deceptive conduct relating to the word 'Schoolies'*", ACCC Chairman, Mr Graeme Samuel, said today.  "Break Free Holidays currently holds trade marks** comprising of the word 'Schoolies' in six different classes". 

An ACCC investigation found that a number of organisations referred to 'Schoolies' in their advertising and promotional material as a general word. In some cases, Break Free Holidays threatened legal proceedings against organisations for making use of the word.  On some occasions Break Free Holidays asserted that a form of approval was required from them prior to referring to this term in advertising.

The ACCC considers that Break Free Holidays may have breached section 52 of the Trade Practices Act 1974 by representing that third parties cannot make use of the word 'Schoolies' irrespective of the context in which the word was used.

Break Free Holidays has acknowledged the ACCC's concerns about its conduct. 

By offering the undertaking to the ACCC, Break Free Holidays has agreed to:

• for five years, obtain proper legal advice prior to communicating with third parties in relation to their use of the word 'Schoolies'
• establish a Register of Communications documenting approaches to third parties about their use of the word 'Schoolies', to be provided to the ACCC annually for three years, and
• implement a trade practices law compliance program for three years.

"The ACCC is very concerned that the holders of monopoly rights, such as the owners of trade marks, do not try to extend these rights by misrepresenting possible infringements or restrictions on use", Mr Samuel said today.

"Businesses should be very mindful of the limits of their intellectual property rights.  It's important to ensure that overzealousness doesn't drift into the misleading and deceptive category of representations".

Background

*Schoolies Week is a gathering that takes place at the end of every school year.  Year 12 students congregate at the Gold Coast in Queensland, along with other sites along the eastern coast of Australia, to celebrate the end of High School.  The celebration usually continues for approximately one month during November/December. 

** A trade mark is a sign (eg a word) used to distinguish goods or services.
Trade mark owners have the exclusive right to use their trade mark, authorise others to use it and to obtain relief if it has been infringed.  However, a trade mark is infringed where a third party uses the sign as a trade mark – as opposed to, for example, using a word in a general way.

In 2000, the Federal Court decided that the word 'Schoolies', despite its registration as a trade mark, was not capable of distinguishing Break Free Holidays' (then Sports Break Pty Ltd) goods and services.

In his judgement, Justice Burchett said that "[p]lainly, honest traders, making appropriate use of the English language, might desire to describe services offered by them to celebrating school leavers as services for Schoolies. The very name of the market should not be the unique preserve of one trader,"(at [22]).

The full text of the decision in the Sports Break Travel Pty Ltd v P & O Holidays Ltd can be accessed at www.austlii.edu.au.