Common law tort where someone represents that his goods or
services are those of someone else (see also misleading and
deceptive conduct in ACL) Misrepresentation can be about the name
of the product, the visual image presented by the product, slogans
relating to the product, etc,so long as they have become part of
the goodwill or reputation of the product
Slide 3
Some signs cannot be registered (get-up, descriptive, colours,
shapes (especially pre-1995 Trade Mark Act) provides a common law
means of enforcing unregistered trade marks Protects proprietary
rights in the goodwill of businesses by preventing competitors from
passing off their goods as those of others Protects the public
interest by ensuring that consumers are not misled as to the source
of goods or services Protects only the association between a
product and its producer (using distinctive features such as marks,
letters, slogans, colours, sounds, etc) - not the product
itself
Slide 4
Reddaway made machine belting sold under the name Camel Hair
Belting; former employee Banham starts making machine belting sold
under the name "Camel Hair Belting" Reddaway sued Banham for
passing off. He argued that there was a large portion of the public
who recognized the name "Camel Hair Belting" as his product. He was
also able to demonstrate that there were people who were getting
the products confused. Court of Appeal found to be descriptive thus
not protectable House of Lords overturns words had acquired a
secondary meaning and public associated name with product produced
by Reddaway
Slide 5
a misrepresentation, made by a trader in the course of trade to
prospective customers, direct or indirect, of goods or services
supplied by him, which is calculated to injure the business or
goodwill of another trader (in the sense that this is a reasonably
foreseeable consequence) and which causes actual damage to a
business or goodwill of the trader by whom the action is brought or
will probably do so.
Slide 6
Reputation in name, indicia, get-up in the relevant market
Misrepresentation by using name, indicia, get-up that the others
product is the original, or is otherwise associated, connected or
endorsed by the original Damage
Slide 7
Broader than just commercial activity Henderson v Radio Corp
Pty Ltd: a photograph of the Hendersons, two well- known
professional ballroom dancers, was used without their permission on
the cover of a ballroom dancing record. Radio Corp had falsely
represented some affiliation between the Henderson and its record
churches, charities, political parties
Slide 8
CS launched and advertised a lemon soft drink directed to adult
males PS launches a similar product using similar names, styles and
advertising Although CS advertising theme was copied by PS, the
products were readily distinguishable; thus no passing off
Slide 9
Survey evidence, sales figures, advertising budget, magazines,
films Knott Investments Pty Ltd v Winnebago Industries Evidence in
support of spill-over reputation: evidence of its operations and
reputation in the US and internationally; evidence that Winnebago
RVs were featured in films, television programs and publications
that were available in Australia; and evidence of travel between
Australia and countries in which Winnebago had a presence,
particularly evidence in relation to motor home rental
holidays
Slide 10
Defendant misrepresents to the public that the source of its
goods or services is the same as the source of those offered by the
plaintiff Misrepresentation does not need to be intentional (so
long as likely to lead public into believing that the goods are
from the same source) Example: Pub refers to cola drink as
Coke
Slide 11
BM Auto Sales v Budget Rent-a-Car BM commences a rental car
business in the NT under the name "Budget. BRAC for many years has
had rental car businesses everywhere else around Australia (except
the NT ) using the name Budget Rent-a-Car BRAC had acquired a
reputation in the NT jurisdiction and had business activities
there, even though they were slight (namely taking of bookings from
NT residents) Many prospective customers would be from other parts
of Australia Injunction granted
Slide 12
Conagra Inc v McCain Foods ConAgra sells Healthy Choice meals
in US; McCain begins to sell in Australia Question of fact whether
have sufficient reputation with respect to goods within Australia
in order to acquire a sufficient level of consumer knowledge of
product McCain prevails: I am of the opinion that it is not
necessary in Australia that a plaintiff, in order to maintain a
passing off action, must have a place of business or a business
presence in Australia; nor is it necessary that his goods are sold
here. It is sufficient if his goods have a reputation in this
country among persons here, whether residents or otherwise, of a
sufficient degree to establish that there is a likelihood of
deception among consumers and potential consumers and of damage to
his reputation.
Slide 13
Knott Investments Pty Ltd v Winnebago Industries, Inc Applicant
need not have conducted business in Australia to support a passing
off claim What is required is proof of a substantial number of
persons (whether residents or visitors) who were aware of the
applicants product and who were thus potential customers. Such
persons represent, in a real sense, a commercial advantage
available to be turned to account were the applicant to commence
business Such persons would be prospective buyers, hirers or users
of recreational vehicles, being the class of persons who would be
likely customers, whether direct or indirect Concept of Spill-over
reputation
Slide 14
Public must associate product/service with a particular source;
difficult to prove association if words are descriptive: McCain
Foods v County Fair Foods McCain Oven Chips cannot prevent use of
Country Fair Oven Chips Hornsby Building Information Centre v
Sydney Building Information Centre Building information centre :
when adopting descriptive or non-distinctive words as trade marks,
others may adopt them and "the risk of confusion must be accepted".
Kosciuszko Thredbo Pty Limited v ThredboNet Marketing Pty Limited
Thredbo: Ordinarily, a trader is entitled to use a geographic name
honestly and accurately unless that name has become distinctive of
another's goods or services and the trader is using the name to
pass off its good or services as those of the other.
Slide 15
Mark Foys Pty Ltd v TVSN (Pacific) Ltd (2000) Tub Happy Case
High Court found that the defendants were advertising "Tub Happy
Cotton Fresh" for the purpose of indicating a connection between
its goods and the plaintiffs Tub Happy goods which did not
exist
Slide 16
Sykes v John Fairfax (1977) Pierpont Speaking journalist who
invented the pseudonym was entitled to continue to use it after he
left the publication (readers associated the name with a particular
author)
Slide 17
Reckitt & Colman Products Ltd v Borden lemon shape Cadbury
Schweppes v Pub Squash Macho advertising campaign lemon colour of
cans beer-label-like labelling Mars Australia Pty Ltd v Sweet
Rewards Pty Ltd words Maltesers red colour on packaging images of
malt balls
Slide 18
Red Bull Australia Pty Ltd v Sydneywide Distributors Pty Ltd
Packaging get-up of LiveWire can sailed too close to the wind to
the RED BULL Energy Drink can
Slide 19
Reckitt & Colman Products v Borden Inc Reckitt sold lemon
juice in lemon shaped containers Deception not in the sale of
plastic lemons, as Reckitt had no proprietary rights in lemon
containers - the law of passing off does not supplant the laws of
designs, copyright or patents. Deception was in selling containers
so fashioned as to suggest that the plastic lemons emanated from
the same source
Slide 20
Miller v Britt Allcroft (Thomas) LLC (2000) 52 IPR 419 (Thomas
Shop) The Thomas Shop in Adelaide sells Thomas the Tank Engine
items Mrs Miller's shop named The Thomas Shop does represent to the
public that she has some licence from or approval from the owners
of the Thomas logos and marks and goodwill to conduct the shop.
Here her disclaimer above the cash register was insufficient
because: no disclaimer on the exterior of the shop; the disclaimer
only at the point of sale; and promotional material provided little
if any disclaimer
Slide 21
Telstra Corporation Ltd v Royal & Sun Alliance Insurance
Ltd (2003) 57 IPR 453 (Goggomobil case) Yellow Pages commercials
(1991-1996) featuring a man with a thick Scottish accent making a
series of telephone calls to find a repairer for his Goggomobil
Insurer uses same man and similar themes passing off Twentieth
Century Fox v Lion Nathan (Duff Beer) (1996) Duff Beer is from the
tv show Simpsons Court found likely association in public mind
between the Simpsons brand and characters and the defendants
product despite no use of Simpsons characters or the Simpsons Duff
Beer design Hogan v Pacific Dunlop (Crocodile Dundee) (1989) 14 IPR
398 Hogan successfully sued a shoe manufacturer for passing off in
relation to an advertisement spoofing his character in the
movie
Slide 22
Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 84 IPR 12
Principal component in the Maltesers get-up was the word Maltesers
It was highly unlikely that any ordinary consumer of chocolate
confectionery could mistake something which is not called Malteser
for a Malteser. Use of name Delfi and different shade of red on
packaging also showed the two products did not originate from the
same source The similar use of floating chocolate balls did not
overcome the differences
Slide 23
ConAgra v McCain Foods Passing off stops persons and companies
gaining a commercial advantage through wrongfully taking the
attributes of another's business if it causes or is likely to cause
that other person's business some damage The basis of the cause of
action lies squarely in misrepresentation, for its underlying
rationale is to prevent commercial dishonesty
Slide 24
Campomar Sociedad v Nike International passing off restrains a
person from use of names, descriptive terms or other indicia to
persuade purchasers or customers to believe that goods or services
have an association, quality or endorsement which belongs or would
belong to goods or services of, or associated with, another or
others
Slide 25
Cadbury Schweppes v Pub Squash Lemon squash (no passing off)
Reckitt & Colman Products Ltd v Borden Inc Lemon juice (no
passing off) Bollinger v Costa Brava Wine Co Limited Champagne (yes
passing off) Mars Australia v Sweet Rewards Malt balls (no passing
off)
Slide 26
REA Group Ltd v Real Estate realestate1.com.au (no passing off
in relation to realestate.com.au) Spanline Weatherstrong Building
Systems Pty Ltd v Tabellz Pty Ltd Double-U roof sheets (no passing
off) Kosciuszko Thredbo Pty Limited v ThredboNet Marketing Pty
Limited Thredbo (no passing off)
Slide 27
Henderson v Radio Corp ballroom dancers Unaided by evidence,
one might consider that the dancing figures merely indicate the
type of music on the record and that it is not possible to come to
the conclusion for which the respondents contend. But one is not
unaided by evidence and, having regard to the fact that the record
was primarily intended for professional dancing teachers, and to
the un-contradicted evidence of four experts in that field, we are
of opinion that the proper finding is that the class of persons for
whom the record was primarily intended would probably believe that
the picture of the respondents on the cover indicated their
recommendation or approval of the record. The only rational purpose
of the wrongful use of the respondents' photograph on the disc
container was to assist the sale of the disc it contained.
Slide 28
Honey v Australian Airlines Gary Honey amateur athlete on
poster promoting sport people would not believe giving endorsement
to airline Talmax Pty Ltd v Telstra Corporation Kieren Perkins
swimmer photo of him wearing a shirt with a Telstra logo; Telstra
uses the photo in advertising person more likely succeed the more
commercial the context, and the more likely that person/category of
person, has a practice of endorsing such businesses, goods or
services more likely that court considers that public assume some
commercial arrangement in place Perkins deprived of opportunity to
commercially exploit his name, image and reputation
Slide 29
10 th Cantannae Sue Smith just took control of her video
recorder Sue Smith journalist sues no association McIlhenny v Blue
Yonder Holdings Tabasco Design for exhibition design services goods
or services not likely to appear to be connected no likelihood of
deception or confusion
Slide 30
Cadbury Schweppes Pty Ltd v Darrell Lea Chocolates Pty Ltd
(No.8) [2008] FCA 470 (11 April 2008) Darrell Lea sells chocolate
in purple wrapper Seeing chocolate in a purple wrapper with Darrell
Leas name on it in a Darrell Lea shop does not make me think it
comes from Cadbury.
Slide 31
Tabasco Design (design exhibition stands); no evidence that
anyone had actually been misled, deceived or confused It is one
thing to hold, on the basis of evidence, that members of the public
who see a product promoted by reference to a scene from a film or a
character from a television series will conclude that there is a
commercial connection. It is another, I think, to conclude in the
absence of evidence of actual confusion that someone in the
respondents' target market will take it that the use of "Tabasco"
as the name of the provider of exhibition design services has a
commercial connection of some sort with the maker of the only
product known as "Tabasco", a spicy and hot sauce. It is one thing
to suppose a connection where the brand "Dunhill", associated with
an "upmarket" cigarette, starts to appear on an expanding range of
other - and different - "upmarket" goods (and even then, the expert
evidence suggested, one might have wondered rather than jumped to
the conclusion that there was an association, when one first saw
that occurring); it is another, as a person with marketing
responsibilities seeking the services of an exhibition designer, to
conclude that a designer whose services are promoted under the name
"Tabasco" has a commercial association with the well known sauce of
that name. The far more likely conclusion is, I think, that,
without any association or permission the designer has - as the
fact is - perhaps cheekily used a name which, by reference to its
only other known use, conjures up "hot" associations.
Slide 32
Character merchandising through television advertisements
should not be seen as setting off a logical train of thought in the
minds of television viewers. Its appeal is nothing like the
insistence of a logical argument on behalf of a product, which may
persuade, but also may repel. An association of some desirable
character with the product proceeds more subtly to foster
favourable inclination towards it, a good feeling about it, an
emotional attachment to it. No logic tells the consumer that boots
are better because Crocodile Dundee wears them for a few seconds on
the screen but the boots are better in his eyes, worn by his idol.
Pacific Dunlop v Hogan per Burchett J
Slide 33
Twentieth Century Fox Film Corporation v South Australian
Brewing Co Ltd (Duff Beer) No disclaimer or overt connection to
Simpsons Offered to provide a disclaimer but consumers may have
thought it was a joke Britt Allcroft v Miller (Thomas Shop)
Disclaimer at cash register No disclaimer at front of store No
disclaimer in advertising material
Slide 34
Advertisers associate with event without paying any sponsorship
fee 1984 Olympics Kodak sponsors TV broadcast, even though Fuji is
official sponsor of Olympic Games 1998 FIFA World Cup - Nike
sponsor teams, even though Adidas is official sponsor 2010 FIFA
world cup Dutch brewer gave away orange clothes to supporters even
though Budweiser official sponsor 2012 Olympics Nike Find Greatness
the other Londons http://mumbrella.com.au/nike-olympics-ambush-ad-
touches-down-in-australia-106305
Slide 35
Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd
(2002) 55 IPR 354 Passing off trumps trademark: CI JI Family Pty
Limited v National Australian Nappies (NAN) Pty Limited [2014] FCA
79
Slide 36
operation of s18 is not restricted by the common law principles
relating to passing- off section provides the public with wider
protection from deception than common law statute provides an
additional remedy Parkdale v Puxu
Slide 37
A person must not, in trade or commerce, engage in conduct that
is misleading or deceptive or is likely to mislead or deceive
Slide 38
Person corporation - Competition and Consumer Act (Cth)
Individual - Fair Trading Act (NSW)
Slide 39
In trade or commerce Re Ku-Ring-Gai Co-operative Building
Society (No 12) Ltd The terms 'trade' and 'commerce' are not terms
of art. They are expressions of fact and terms of common knowledge.
While the particular instances that may fall within them will
depend upon the varying phrases of development of trade, commerce
and commercial communication, the terms are clearly of the widest
import... They are not restricted to dealings or communications
which can properly be described as being at arm's length in the
sense that they are within open markets or between strangers or
have a dominant objective of profit-making Concrete Constructions
(NSW) Pty Ltd v Nelson The conduct must be in itself an aspect or
element of activities or transactions which, of their nature, bear
a trading or commercial character Argy v Blunts & Lane Cove
Real Estate NOT vendor of home not engaged in trade or commerce
(but real estate agent and vendors solicitor)
Slide 40
Campomar v Nike consider members of a class to which the
conduct is directed "ordinary" or "reasonable" members of class
whether the misconceptions, or deceptions, alleged to arise or to
be likely to arise are properly to be attributed to the ordinary or
reasonable members of the classes of prospective purchasers
disregarding assumptions made by persons whose reactions are
extreme or fanciful Parkdale v Puxu not protect persons who fail to
take reasonable care of their own interests
Slide 41
Dont need intention Parkdale v Puxu conduct not intended to
mislead or deceive and which was engaged in "honestly and
reasonably" might nevertheless contravene Campomar v Nike where
there is finding of intention to deceive, the court may more
readily infer that the intention has been or in all probability
will be effective.
Slide 42
Parkdale v Puxu misleading and deceptive both share a concept
of leading into error statement will be considered misleading if it
induces or is capable of inducing error, leading a person into
error mere confusion is not enough erroneous assumption; not
include assumptions whose reactions are extreme or fanciful; not
persons own erroneous assumption not attributable to respondent
Taco Co of Australia v Taco Bell question of fact to be determined
in the context of the evidence of the surrounding facts and
circumstances evidence of actual deception is persuasive but not
essential
Slide 43
nothing capricious or unreasonable or unpredictable in Sheppard
J's conclusion that the placing of the "NIKE SPORT FRAGRANCE"
product in the same area of pharmacies with other sports fragrances
was likely to mislead or deceive members of the public into
thinking that the "NIKE SPORT FRAGRANCE" product was in some way
promoted or distributed by Nike International itself or with its
consent and approval
Slide 44
Person in trade or commerce in connection with supply or
promotion of goods or services (a)false or misleading
representation goods of a particular standard, quality, value,
grade, composition, style or model or have had a particular history
or particular previous use (g)false or misleading representation
goods or services have sponsorship, approval, performance
characteristics, accessories, uses or benefits; (h)false or
misleading representation that person making the representation has
a sponsorship, approval or affiliation (k)make a false or
misleading representation concerning the place of origin of
goods
Slide 45
s224 - Pecuniary penalty (s29) s232 injunctions s236 - damages
s237 compensation order s243 other orders Declare contract void
Refuse enforce contract s246 non-punitive orders Community service
orders Direction to establish compliance program / training program
Corrective advertising s247 adverse publicity s248 disqualify
managing corporations (s29)