Let's go to Thredbo in the Winnebago and find some realestate.com.au: trade marks and what they can and can't do for you - Part 2

This is the second in a series of three articles focusing on some of this year's Federal Court cases exploring what makes a good trade mark, how registering a trade mark can help and what legal proceedings can achieve in terms of court orders and remedies.

Topic 2 - That worrying descriptive trademark - BUT REGISTERED!

The Kosciusko Thredbo v ThredboNet Marketing [2013] FCA 562 case referred to in the first article of this series suggested that descriptive and geographical names are not the best choice as the building blocks of a brand development strategy. Further, putting a "no Thredbo" covenant into leases and contract documents didn't impress the Court in that case. So would anything have worked better? Well, applying for and obtaining a registered trade mark would be a good start, as the decision in REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559 demonstrates.

The case concerned the realestate.com.au business, which started in 1999. It is essentially an online matching service, matching real estate agents' property listings with prospective purchasers and tenants. The trade mark, as in the Thredbo case, is descriptive. It is also a good example of why...