Break Free Holidays Pty Ltd - s.87B undertaking

Break Free Holidays Pty Ltd has provided court-enforceable undertakings to the ACCC in relation to the six trademarks it holds over the word ‘schoolies’.

The ACCC had concerns covering five areas of potentially misleading and deceptive conduct on the part of Break Free Holidays:

• use of the symbol ‘TM’ or ® in conjunction with the word ‘Schoolies’
• advising others that Break Free Holidays holds trademarks over the word ‘Schoolies’
• asserting to others that the use of the word ‘Schoolies’ may be an infringement of the trademark/s
• threatening to commence legal action for infringement of the trademark/s, and
• asserting that approval was required in order to be able to refer to ‘Schoolies’, or requesting that words to the effect of ‘used by permission of Break Free Holidays’ appear in conjunction with the word ‘Schoolies’.

The ACCC is of the view that Break Free Holidays, in asserting its rights over the trademarks regardless of the context in which the word ‘Schoolies’ was used, could be considered misleading and deceptive and in breach of section 52 of the Trade Practices Act 1974 (the TPA).

Break Free Holidays acknowledges that the ACCC has concerns about this conduct.

The Undertaking requires Break Free Holidays to do three things:

• not do any of the actions referred to above for five years, without first obtaining legal advice to the effect that the use by the third party of ‘schoolies’ is use of the word as a trademark;
• establish a Register of Communications to document any approaches made to third parties about use of ‘schoolies’.  This will be provided to the ACCC annually for three years; and
• implementation of a Compliance Program to cover Part V Div 1 of the TPA, for three years.