LPAB Winter Session
Therese Catanzariti
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some signs cannot be registered
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Reddaway Ltd. v. George Banham 1896
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◦ get-up
◦ descriptive
◦ colours, shapes (esp pre-1995 Trade Mark Act)
“camel hair belting”
descriptive
but secondary meaning – associated with Reddaway
protects against injury to the plaintiff’s goodwill built
up by the plaintiff’s activities
does not protect the goods and services
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
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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.
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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
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Damage
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broader than commercial
commercial
individuals
◦ Henderson
professional ballroom dancers
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church
Conagra v McCain Foods
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ConAgra sells “Healthy Choice” meals in US
McCain aware of ConAgra and sell “Health
Choice” in Australia
“The tort of passing off protects the business
of the plaintiff with its many facets: its assets,
goodwill and reputation.”
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Survey evidence
Sales figures
Advertising budget
Magazines
Films
Knott Investments Pty Ltd v Winnebago Industries
The New York Times, The Wall Street Journal, The
Washington Post, Time Magazine, Popular
Science, The Times, National Geographic
Australian Caravan World
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public associate product/service with a
particular ‘source’
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difficult if descriptive
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McCain Foods v County Fair Foods
oven chips
Hornsby Building Information Centre v Sydney
Building Information Centre
“Building information centre”
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Conagra Inc v McCain Foods
ConAgra “Healthy Choice” meals in US
question of fact whether have sufficient reputation with respect to goods
within the country in order to acquire a sufficient level of consumer
knowledge of product
Knott Investments Pty Ltd v Winnebago Industries, Inc [2013] FCAFC 59
an 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
“Spill-over reputation”
ConAgra v McCain Foods
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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.
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The basis of the cause of action lies squarely
in misrepresentation, for its underlying
rationale is to prevent commercial
dishonesty.
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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
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Name
Pseudonym
Image
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Fictitious Character
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◦ Telstra v Sun Alliance (Goggomobil)
◦ Twentieth Century Fox v Lion Nathan (Duff Beer)
◦ Hogan v Pacific Dunlop (Crocodile Dundee)
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Reckitt & Colman Products Ltd v Borden
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Cadbury Schweppes v Pub Squash
◦ lemon shape
◦ Macho advertising campaign
◦ lemon colour of cans
◦ beer-label-like labelling
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Mars Australia Pty Ltd v Sweet Rewards Pty Ltd
◦ words “Maltesers”
◦ red colour on packaging
◦ images of malt balls
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“secondary” or “suggestive” brand advertising
advertising which conjures up a brand without
referring to it, where images are so established
and well-known that they create an impression of
association or connection to a primary brand
notwithstanding that the name of the brand does
not appear
“Secondary branding or suggestive brand
advertising occurs when a word, character,
symbol or image creates, on its own instant
recognition or association with a particular
product or business.”
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Cadbury Schweppes v Pub Squash
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Lemon squash
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Reckitt & Colman Products Ltd v Borden Inc
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Lemon juice
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Bollinger v Costa Brava Wine Co Limited
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Champagne
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Mars Australia v Sweet Rewards
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malt balls
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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.
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Honey v Australian Airlines
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Gary Honey athlete – no association that AA license image to
Christian church
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10th Cantannae
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Sue Smith journalist – no association
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Talmax Pty Ltd v Telstra Corporation
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Kieren Perkins swimmer - association
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
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“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
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Twentieth Century Fox Film Corporation v South
Australian Brewing Co Ltd (Duff Beer)
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Disclaimer not taken seriously because of nature
of character
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Britt Allcroft v Miller (Thomas Shop)
Disclaimer at cash register
No disclaimer at front of store
No disclaimer in advertising material
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Mars Australia v Sweet Rewards
the “distinguishing feature” of the Sweet Rewards
product was the trade mark “Delfi”
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McIlhenny v Blue Yonder Holdings – 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.
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advertisers associate with event without paying any sponsorship
fee
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1984 Olympics – Kodak sponsors TV broadcast, even though Fuji
is official sponsor of Olympic Games
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1998 FIFA World Cup - Nike sponsor teams, even though Adidas
is official sponsor
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2010 FIFA world cup – Dutch brewer gave away orange clothes to
supporters even though Budweiser official sponsor
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2012 Olympics – Nike “Find Greatness” – the other Londons
http://mumbrella.com.au/nike-olympics-ambush-ad-touchesdown-in-australia-106305
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operation of s52 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
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A person must not, in trade or commerce,
engage in conduct that is misleading or
deceptive or is likely to mislead or deceive
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Person
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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 profitmaking”
Concrete Constructions (NSW) Pty Ltd v Nelson
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The conduct must be in itself an aspect or element of activities or transactions
which, of their nature, bear a trading or commercial character
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Argy v Blunts & Lane Cove Real Estate
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NOT vendor of home not engaged in trade or commerce
(but real estate agent and vendor’s solicitor)
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Campomar v Nike
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disregarding assumptions made by persons
whose reactions are extreme or fanciful
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
◦ Parkdale v Puxu
not protect persons who fail to take reasonable care of
their own interests
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Don’t need intention
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Parkdale v Puxu
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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.
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Parkdale v Puxu
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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
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mere confusion is not enough
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erroneous assumption
not include assumptions whose reactions are extreme or fanciful
not person’s own erroneous assumption not attributable to respondent
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Taco Co of Australia v Taco Bell
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question of fact to be determined in the context of the evidence of the
surrounding facts and circumstances
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evidence of actual deception is persuasive but not essential
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“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”
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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;
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(h) false or misleading representation that person making the
representation has a sponsorship, approval or affiliation
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(k) make a false or misleading representation concerning the
place of origin of goods
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s224
s232
s236
s237
s243
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s246 non-punitive orders
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- 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)