Intellectual Property
Winter Session 2015
(Week 4)
Beth Oliak
•
•
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
•
•
•
•
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
•
•
•
•
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
•
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.
•
•
•
Reputation in name, indicia, get-up in the
relevant market
Misrepresentation by using name, indicia,
get-up that the other’s product is the
original, or is otherwise associated,
connected or endorsed by the original
Damage
•
Broader than just “commercial” activity
•
Henderson v Radio Corp Pty Ltd: a
•
churches, charities, political parties
photograph of the Hendersons, two wellknown 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
•
•
•
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
•
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
•
•
•
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”
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
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.”
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 applicant’s
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”
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.
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 plaintiff’s “Tub Happy” goods
which did not exist
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)
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
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
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
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
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 defendant’s 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
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
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
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
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)
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)
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.
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
10th 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
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 Lea’s name on it in a Darrell Lea shop
does not make me think it comes from
Cadbury.”
•
•
•
•
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.
“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
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
•
•
•
•
•
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-adtouches-down-in-australia-106305
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
•
•
•
operation of s18 is not restricted by the
common law principles relating to passingoff
section provides the public with wider
protection from deception than common law
statute provides an additional remedy
Parkdale v Puxu
A person must not, in trade or commerce,
engage in conduct that is misleading or
deceptive or is likely to mislead or deceive
Person
◦ corporation - Competition and Consumer Act (Cth)
◦ Individual - Fair Trading Act (NSW)
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 vendor’s solicitor)
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
•
Don’t 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.
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 person’s 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
“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”
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

s224
s232
s236
s237
s243

s246 non-punitive orders






- Pecuniary penalty (s29)
– injunctions
- damages
– compensation order
– other orders
◦ Declare contract void
◦ Refuse enforce contract
◦ Community service orders
◦ Direction to establish compliance program / training
program
◦ Corrective advertising
s247 – adverse publicity
s248 – disqualify managing corporations (s29)