Differences

This shows you the differences between two versions of the page.

Link to this comparison view

Both sides previous revision Previous revision
Next revision
Previous revision
ausip:passing-off [2018/10/30 15:49]
jessiej_87 Edit and additional content
ausip:passing-off [2019/02/25 15:16] (current)
jessiej_87
Line 27: Line 27:
  
 Lord Oliver in *Reckitt & Coleman v Borden* [1990] RPC 341 stated that: Lord Oliver in *Reckitt & Coleman v Borden* [1990] RPC 341 stated that:
->'It would, however, be impossible to enumerate or classify all the possible ways in which a man may make the false representation relied on.'+ 
 +>"It would, however, be impossible to enumerate or classify all the possible ways in which a man may make the false representation relied on".
  
 Gummow J in *ConAgra Inc v McCain Foods (Aust) Pty Ltd* (1992) 33 FCR 302 at 356 noted that: Gummow J in *ConAgra Inc v McCain Foods (Aust) Pty Ltd* (1992) 33 FCR 302 at 356 noted that:
->'​The law of passing off “contains sufficient nooks and crannies to make it difficult to formulate any satisfactory definition in short form.' 
  
 +>"​The law of passing off '​contains sufficient nooks and crannies to make it difficult to formulate any satisfactory definition in short form".
 +
 +
 +
 +## The Origins of Passing Off
 +
 +Passing off was originally recognised by both common law court and courts of equity. ​
 +
 +### Passing Off as a Common Law Tort
 +
 +Commons law considered passing off a form of fraud. The commons law focus in therefore on the representation of traders and whether consumers have been deceived by the representations of traders. A common law action for passing off would be brought by a consumer who had been deceived into trading with one proprietor on the assumption that they were in fact dealing with another trader. The action of passing off expanded over the 20th Century into the tort known today. ​
 +
 +### Passing Off and Equity
 +
 +The court of equity were interested in passing off, not as a form of fraud, but in relation to the property aspects, namely the reputation of the trader. The equity court'​s focus on business reputation is one characteristic which is still central to todays tort of passing off.  ​
  
-##Three Core Elements+## The Elements ​of Passing Off
  
 Passing off has three core elements known as "the classic trinity"​. ((*ConAgra Inc v McCain Foods (Aust) Pty Ltd* (1992) 33 FCR 302 at 355-356 (Gummow J) citing *Reckitt & Colman Products Ltd v Borden Inc* [1990] RPC 341 at 406 and *Consorzio del Prosciutto di Panna v Marks and Spencer plc* [1991] RPC 351 at 368-369; *TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc* (1999) 45 IPR 43, [25])) Passing off has three core elements known as "the classic trinity"​. ((*ConAgra Inc v McCain Foods (Aust) Pty Ltd* (1992) 33 FCR 302 at 355-356 (Gummow J) citing *Reckitt & Colman Products Ltd v Borden Inc* [1990] RPC 341 at 406 and *Consorzio del Prosciutto di Panna v Marks and Spencer plc* [1991] RPC 351 at 368-369; *TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc* (1999) 45 IPR 43, [25]))
Line 46: Line 61:
  
 ## Element 1: Reputation or Goodwill ## Element 1: Reputation or Goodwill
 +
 To establish this element for the purpose of passing off, the following must be shown: ​ To establish this element for the purpose of passing off, the following must be shown: ​
  
Line 58: Line 74:
  
 ### Who can Establish Business Reputation ### Who can Establish Business Reputation
 +
 Courts have taken a very liberal approach to this question – so, only even vaguely commercial activity would satisfy this – ie professional associations and charities. There is no requirement that the public be aware of the plaintiff’s identity as a proprietor, but only that the public think that the goods come from a particular source which in fact is the plaintiff. ((*Reckitt & Coleman*)) ​ Courts have taken a very liberal approach to this question – so, only even vaguely commercial activity would satisfy this – ie professional associations and charities. There is no requirement that the public be aware of the plaintiff’s identity as a proprietor, but only that the public think that the goods come from a particular source which in fact is the plaintiff. ((*Reckitt & Coleman*)) ​
  
Line 63: Line 80:
    
  
-### When must Reputation be Established?​+#### When must Reputation be Established?​
  
 The plaintiff’s reputation must be assessed at the date of the commencement of the conduct complained of. ((*Cadbury v Squash*)) This means that a plaintiff who would not have succeeded at that date will not do so by the acquisition of a greater reputation. Note, however, that a right of action may be sustained even where the plaintiff no longer trades – provided there is residual goodwill. However, it is vital that the necessary reputation remain. It can be assumed that, over time, reputation will fade, and hence, any rights under passing off will also fade. The plaintiff’s reputation must be assessed at the date of the commencement of the conduct complained of. ((*Cadbury v Squash*)) This means that a plaintiff who would not have succeeded at that date will not do so by the acquisition of a greater reputation. Note, however, that a right of action may be sustained even where the plaintiff no longer trades – provided there is residual goodwill. However, it is vital that the necessary reputation remain. It can be assumed that, over time, reputation will fade, and hence, any rights under passing off will also fade.
  
 ### Types of Trade Indicia ### Types of Trade Indicia
 +
 This may include trade names, the get-up of goods, the title of goods, aspect of packaging, descriptive material, advertising formats, slogans, jingles, characters in a television campaigns, mastheads of newspapers. A Plaintiff’s reputation may be established not only in a trade mark or trade name or in a distinctive description but in any other material or activity which has become associated or identified in the minds of the public, or a sufficient section of the public. This may include trade names, the get-up of goods, the title of goods, aspect of packaging, descriptive material, advertising formats, slogans, jingles, characters in a television campaigns, mastheads of newspapers. A Plaintiff’s reputation may be established not only in a trade mark or trade name or in a distinctive description but in any other material or activity which has become associated or identified in the minds of the public, or a sufficient section of the public.
  
Line 88: Line 106:
  
 ### Trade Indicia - Acquiring Secondary Meaning ### Trade Indicia - Acquiring Secondary Meaning
 +
 It is commonly held that descriptive marks must have acquired a secondary meaning, or secondary signification,​ indicating goods or services connected exclusively with the plaintiff. ((*Reckitt & Coleman; Reddaway v Banham*)) ​ Where a word has acquired a secondary meaning as indicating the plaintiff’s goods or services, it might be difficult for others to use it without committing a passing off.  It is commonly held that descriptive marks must have acquired a secondary meaning, or secondary signification,​ indicating goods or services connected exclusively with the plaintiff. ((*Reckitt & Coleman; Reddaway v Banham*)) ​ Where a word has acquired a secondary meaning as indicating the plaintiff’s goods or services, it might be difficult for others to use it without committing a passing off. 
  
Line 112: Line 131:
 Held: Name was distinctive of both place of origin and quality. ​ Held: Name was distinctive of both place of origin and quality. ​
  
-### Reputation established in the relevant jurisdiction+#### Reputation established in the relevant jurisdiction
 The reputation must be established in the jurisdiction,​ but note that there is no requirement that the trader has actually traded in the jurisdiction,​ or even that their goods have been sold in the jurisdiction. Rather, reputation can be established by showing that people in the jurisdiction would be aware of the plaintiff’s reputation ((*ConAgra*)) ​ For sufficient reputation to be found there must also be a substantial number of persons in the jurisdiction who are aware of the plaintiff’s goods/​services. ((*ConAgra* per Gummow J)) The reputation must be established in the jurisdiction,​ but note that there is no requirement that the trader has actually traded in the jurisdiction,​ or even that their goods have been sold in the jurisdiction. Rather, reputation can be established by showing that people in the jurisdiction would be aware of the plaintiff’s reputation ((*ConAgra*)) ​ For sufficient reputation to be found there must also be a substantial number of persons in the jurisdiction who are aware of the plaintiff’s goods/​services. ((*ConAgra* per Gummow J))
  
Line 122: Line 141:
  
 ### Proving Reputation ### Proving Reputation
 +
 May be proved by expert evidence, witness evidence or survey evidence. ​ Expert evidence will be admissible if the expertise of the witness arises from specialised knowledge for example marketing experts or experts in a certain type of marketing (such as wine marketing). ((*Henschke v Rosemount*)) Consumers may be brought into court to testify where they have actually been deceived but this type of evidence is not very probative. (((*Parkdale v Puxu*)) While the court may accept expert and witness evidence, the probity of this evidence will vary greatly. ​ May be proved by expert evidence, witness evidence or survey evidence. ​ Expert evidence will be admissible if the expertise of the witness arises from specialised knowledge for example marketing experts or experts in a certain type of marketing (such as wine marketing). ((*Henschke v Rosemount*)) Consumers may be brought into court to testify where they have actually been deceived but this type of evidence is not very probative. (((*Parkdale v Puxu*)) While the court may accept expert and witness evidence, the probity of this evidence will vary greatly. ​
  
Line 140: Line 160:
  
 ### Overseas Brands ### Overseas Brands
 +
 The court'​s recognition of the value and impact of indirect advertising techniques makes it easier for owners of well-known brands overseas, that are not sold or directly marketed in Australia, to establish brand reputation in this country. This recognition will make it increasingly difficult for Australians to copy profitable overseas products and to defend such imitations successfully on the basis that the product was not yet officially launched in Australia, and therefore that the reputation was not yet established in this jurisdiction. The court'​s recognition of the value and impact of indirect advertising techniques makes it easier for owners of well-known brands overseas, that are not sold or directly marketed in Australia, to establish brand reputation in this country. This recognition will make it increasingly difficult for Australians to copy profitable overseas products and to defend such imitations successfully on the basis that the product was not yet officially launched in Australia, and therefore that the reputation was not yet established in this jurisdiction.
  
Line 149: Line 170:
  
  
-##Element 2: Misrepresentation+## Element 2: Misrepresentation 
 A misrepresentation in passing off refers to conduct on the part of the trader which relies on the reputation or goodwill of the plaintiff usually by misrepresenting some sort of connection with the plaintiff’s business, goods or services and results in consumers coming to an erroneous conclusion about or being confused about a connection between the goods/​services of that traders and those of another trader. A misrepresentation in passing off refers to conduct on the part of the trader which relies on the reputation or goodwill of the plaintiff usually by misrepresenting some sort of connection with the plaintiff’s business, goods or services and results in consumers coming to an erroneous conclusion about or being confused about a connection between the goods/​services of that traders and those of another trader.
  
Line 173: Line 195:
  
 Scope of protection: Scope of protection:
-> “It is only if a plaintiff can establish that a defendant has invaded his “intangible property right” in his product by misappropriating descriptions which have become recognised by the market as distinctive of the product that the law will permit competition to be restricted. Any other approach would encourage monopoly.” (at 863 C-D [44])+ 
 +> “It is only if a plaintiff can establish that a defendant has invaded his “intangible property right” in his product by misappropriating descriptions which have become recognised by the market as distinctive of the product that the law will permit competition to be restricted. Any other approach would encourage monopoly.” ​((at 863 C-D [44]))
  
  
Line 179: Line 202:
  
 Facts: Philips sold the only triple headed rotary electric shaver on the market. Philips registered trade marks were two-dimensional device marks depicting an equilateral triangular shape containing three circular shaving heads. Remington introduced a shaver of similar design. ​ Facts: Philips sold the only triple headed rotary electric shaver on the market. Philips registered trade marks were two-dimensional device marks depicting an equilateral triangular shape containing three circular shaving heads. Remington introduced a shaver of similar design. ​
 +
 Held: An action in passing was not successful. Passing off does not ground a monopoly on products, that is the realm of patent law. Patent has appropriate restraints on the monopoly, passing off does not and are indefinite so it is not appropriate that they function to restrict competition in this way.  Remington absolutely copied but this could not be protected under passing off.  Held: An action in passing was not successful. Passing off does not ground a monopoly on products, that is the realm of patent law. Patent has appropriate restraints on the monopoly, passing off does not and are indefinite so it is not appropriate that they function to restrict competition in this way.  Remington absolutely copied but this could not be protected under passing off. 
        
Line 186: Line 210:
  
 Facts: Loss of opportunity for business expansion. Defendant legitimately sold garden equipment under the name '​LEGO'​ in Israel. Facts: Loss of opportunity for business expansion. Defendant legitimately sold garden equipment under the name '​LEGO'​ in Israel.
 +
 Held: EWHC found that LEGO's reputation extended beyond toys and was a '​household word'​. ​ No intention to extend to gardening equipment was necessary. Substantial number of consumers would be deceived. ​ Held: EWHC found that LEGO's reputation extended beyond toys and was a '​household word'​. ​ No intention to extend to gardening equipment was necessary. Substantial number of consumers would be deceived. ​
  
Line 195: Line 220:
  
 Tamberlin J at 466-467: Tamberlin J at 466-467:
->'Their intention was to “sail as close as possible to the wind” in order to “cash in” on the reputation of The Simpsons without stepping over the line of passing off or deceit. The breweries knew that they were able by use of the name “Duff” alone to evoke the powerful association without using names or images. I do not think that the changes in can colour or the “tidying up” of the way “Duff” was written was effective to eliminate the association. Accordingly,​ I consider this knowledge is important evidence to support the inference that the goal of creating and exploiting the powerful association with The Simpsons had been achieved.'+ 
 +>"Their intention was to “sail as close as possible to the wind” in order to “cash in” on the reputation of The Simpsons without stepping over the line of passing off or deceit. The breweries knew that they were able by use of the name “Duff” alone to evoke the powerful association without using names or images. I do not think that the changes in can colour or the “tidying up” of the way “Duff” was written was effective to eliminate the association. Accordingly,​ I consider this knowledge is important evidence to support the inference that the goal of creating and exploiting the powerful association with The Simpsons had been achieved".
  
 __*Mars Australia Pty Ltd v Sweet Rewards Pty Ltd* (2009) 81 IPR 354__  __*Mars Australia Pty Ltd v Sweet Rewards Pty Ltd* (2009) 81 IPR 354__ 
Line 202: Line 228:
  
 Perram J at 362 [32]: Perram J at 362 [32]:
-Because the principal component in the Maltesers get-up is the word “Maltesers”,​ it is highly unlikely that any ordinary consumer of chocolate confectionary could mistake something which is not called a Malteser for a Malteser. In that sense, Mars is a victim of its own success. The fact that the Delfi jars carry the name “Malt Balls” and use slightly different visual features is sufficiently clear to distinguish them from the Maltesers products.+ 
 +"Because the principal component in the Maltesers get-up is the word “Maltesers”,​ it is highly unlikely that any ordinary consumer of chocolate confectionary could mistake something which is not called a Malteser for a Malteser. In that sense, Mars is a victim of its own success. The fact that the Delfi jars carry the name “Malt Balls” and use slightly different visual features is sufficiently clear to distinguish them from the Maltesers products".
  
  
Line 214: Line 241:
 Held: NSW SC found that consumers could be misled to thinking that the Hendersons had approved or recommended the record. Misrepresentation amounted to passing off.  There was no need for a common field of activity. Held: NSW SC found that consumers could be misled to thinking that the Hendersons had approved or recommended the record. Misrepresentation amounted to passing off.  There was no need for a common field of activity.
  
-### Fraud is not an Essential Element+### Fraud is Not an Essential Element 
 Proof of fraudulent misrepresentation is not necessary to prove passing off there is no requirement that deception be intended, but such an intention will be relevant to damages, and proof of an intention to deceive will assist in proving actual or likely deception (*ConAgra Inc v McCain Foods (Aust) Pty Ltd* (1992) 23 IPR 193; Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd (1980) 32 ALR 387). Deliberate appropriation of attractive features of a competitor’s product may lead to an inference of an intention to deceive. ((*Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd* [2002] FCAFC 157)) Proof of fraudulent misrepresentation is not necessary to prove passing off there is no requirement that deception be intended, but such an intention will be relevant to damages, and proof of an intention to deceive will assist in proving actual or likely deception (*ConAgra Inc v McCain Foods (Aust) Pty Ltd* (1992) 23 IPR 193; Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd (1980) 32 ALR 387). Deliberate appropriation of attractive features of a competitor’s product may lead to an inference of an intention to deceive. ((*Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd* [2002] FCAFC 157))
  
 The Full Federal Court in *Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd* [2002] FCAFC 157 held: The Full Federal Court in *Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd* [2002] FCAFC 157 held:
->'… where a trader, having knowledge of a particular market, borrows aspects of a competitor’s get-up, it is a reasonable inference that he or she believes that there will be a market benefit in so doing. Often, the obvious benefit will be the attraction of custom which would otherwise have gone to the competitor. It is an available inference that such borrowing was “fitted for the purpose and therefore likely to deceive or confuse… Of course, the trader may explain his or her conduct in such a way as to undermine the availability of that inference. Obviously, this reasoning will only apply where there are similarities in get-up which suggest borrowing …'+ 
 +>"… where a trader, having knowledge of a particular market, borrows aspects of a competitor’s get-up, it is a reasonable inference that he or she believes that there will be a market benefit in so doing. Often, the obvious benefit will be the attraction of custom which would otherwise have gone to the competitor. It is an available inference that such borrowing was “fitted for the purpose and therefore likely to deceive or confuse… Of course, the trader may explain his or her conduct in such a way as to undermine the availability of that inference. Obviously, this reasoning will only apply where there are similarities in get-up which suggest borrowing …"
  
 In determining intent to defraud the conduct of the defendant must be viewed as a whole - consideration cannot be given to words or acts which in isolation would be likely to mislead if those words or acts, when put into context, were not capable of misleading. ((*Parkdale Custom Built Furniture Pty Ltd v Puxo Pty Ltd* (1982) 149 CLR 19)) In *Parkdale* the defendant'​s furniture closely resembled that of the plaintiff in a way that suggested deliberate copying. However, because the defendant adequately labelled their furniture so as to show the true origin of the goods, there was no passing off.  In determining intent to defraud the conduct of the defendant must be viewed as a whole - consideration cannot be given to words or acts which in isolation would be likely to mislead if those words or acts, when put into context, were not capable of misleading. ((*Parkdale Custom Built Furniture Pty Ltd v Puxo Pty Ltd* (1982) 149 CLR 19)) In *Parkdale* the defendant'​s furniture closely resembled that of the plaintiff in a way that suggested deliberate copying. However, because the defendant adequately labelled their furniture so as to show the true origin of the goods, there was no passing off. 
Line 234: Line 263:
  
 ### Other Requirements for Misrepresentation ### Other Requirements for Misrepresentation
 +
 Authority suggests misrepresentation must continue up until the point of sale and if cleared up before the point of purchase this will be insufficient for misrepresentation. ((*Cadbury Schweppes*)) There must be likelihood of actual deception, mere confusion or a cause to wonder whether there is an association is not sufficient (*Parkdale*). However, if there is a deliberate attempt to create uncertainty,​ then this would amount to deception. ((Lockhart J in *Bridge Stockbrokers v Bridges* (1984) 5 IPR 81))  Authority suggests misrepresentation must continue up until the point of sale and if cleared up before the point of purchase this will be insufficient for misrepresentation. ((*Cadbury Schweppes*)) There must be likelihood of actual deception, mere confusion or a cause to wonder whether there is an association is not sufficient (*Parkdale*). However, if there is a deliberate attempt to create uncertainty,​ then this would amount to deception. ((Lockhart J in *Bridge Stockbrokers v Bridges* (1984) 5 IPR 81)) 
  
 ### Proving Misrepresentation ### Proving Misrepresentation
 +
 Expert evidence and survey evidence will be less useful in establishing deception than it will be in establishing reputation. Expert evidence and survey evidence will be less useful in establishing deception than it will be in establishing reputation.
  
Line 243: Line 274:
 Survey evidence will not be admissible to establish whether potential consumers would have been deceived, but evidence of instances of actual deception would be. Survey evidence will not be admissible to establish whether potential consumers would have been deceived, but evidence of instances of actual deception would be.
  
-##Element 3: Damage+## Element 3: Damage 
 There is no requirement that actual damage be shown, only a *likelihood of damage* - a real and tangible risk of damage. ((*Henderson v Radio Corporation*)) Moreover, damage must only really be established if the plaintiff wants more than nominal damages or an injunction – ie where the plaintiff is seeking damages or an account of profits. ​ Where the first two elements have been established in an action for passing off, damage will often be presumed. Damage must be by reason of an erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the plaintiff. ​ There is no requirement that actual damage be shown, only a *likelihood of damage* - a real and tangible risk of damage. ((*Henderson v Radio Corporation*)) Moreover, damage must only really be established if the plaintiff wants more than nominal damages or an injunction – ie where the plaintiff is seeking damages or an account of profits. ​ Where the first two elements have been established in an action for passing off, damage will often be presumed. Damage must be by reason of an erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the plaintiff. ​
  
-### Types of Damage ​+### Types of Damage 
 + 
 Courts have been liberal with the types of damage that will satisfy the cause of action, the following are some examples: Courts have been liberal with the types of damage that will satisfy the cause of action, the following are some examples:
  
Line 260: Line 293:
  
 ## Disclaimers ## Disclaimers
- It may be possible to avoid passing off by disclaiming any association with the plaintiff. To be effective any such disclaimer must be as bold, precise and compelling as the trade description itself and must be effectively brought to the notice of any person to whom the goods may be supplied (*Norman v Bennett*)+ 
 +It may be possible to avoid passing off by disclaiming any association with the plaintiff. To be effective any such disclaimer must be as bold, precise and compelling as the trade description itself and must be effectively brought to the notice of any person to whom the goods may be supplied. ((*Norman v Bennett*)
  
 It is far less likely that a disclaimer will neutralise the effect of a particularly distinctive trade mark. More often than not, courts will take the view that a disclaimer will not be noticed or understood or that it might be too easily removed. ((*Hutchence v South Sea Bubble Co*)) A disclaimer will be less likely to be effective where goods are ‘low involvement goods’ – goods where purchasing decisions are made quickly and without much thought or examination - generally cheap goods. It is far less likely that a disclaimer will neutralise the effect of a particularly distinctive trade mark. More often than not, courts will take the view that a disclaimer will not be noticed or understood or that it might be too easily removed. ((*Hutchence v South Sea Bubble Co*)) A disclaimer will be less likely to be effective where goods are ‘low involvement goods’ – goods where purchasing decisions are made quickly and without much thought or examination - generally cheap goods.
Line 267: Line 301:
  
 Tamberlin J in *Twentieth Century Fox v South Australian Brewing*: Tamberlin J in *Twentieth Century Fox v South Australian Brewing*:
-> 'In considering cases involving associations between a name and a product there must always be room for differences in each case arising from variations in the target market; the nature and strength of the associations conveyed by the use of the name; the way in which the product is distributed;​ and the way in which the use of the name is calculated to attract the market. These considerations make it unsafe to treat any particular decision as a precedent. Of course, some general guidance can be derived from particular decisions, but there is no formula to the effect that the use of any particular words of disclaimer such as “unauthorised” or that disavowal in the form of an express statement of disassociation will always serve to dispel such association in the marketplace'​ 
  
 +> "In considering cases involving associations between a name and a product there must always be room for differences in each case arising from variations in the target market; the nature and strength of the associations conveyed by the use of the name; the way in which the product is distributed;​ and the way in which the use of the name is calculated to attract the market. These considerations make it unsafe to treat any particular decision as a precedent. Of course, some general guidance can be derived from particular decisions, but there is no formula to the effect that the use of any particular words of disclaimer such as “unauthorised” or that disavowal in the form of an express statement of disassociation will always serve to dispel such association in the marketplace"​.
  
-##Remedies+ 
 +## Remedies
  
 There are two main remedies available for an action in passing off. These are injunctions and damages. In instances involving fraud, an account of profits may be sought. Further, where there is evidence of fraud exemplary damages may be sought. ((Hogan v Koala Dundee Pty Ltd* [1988] FCA 333, *Pacific Dunlop Ltd v Hogan* [1989] FCA 185 and *Irvine v Talksport* Ltd [2002] EWHC 367 (Cth) )) There are two main remedies available for an action in passing off. These are injunctions and damages. In instances involving fraud, an account of profits may be sought. Further, where there is evidence of fraud exemplary damages may be sought. ((Hogan v Koala Dundee Pty Ltd* [1988] FCA 333, *Pacific Dunlop Ltd v Hogan* [1989] FCA 185 and *Irvine v Talksport* Ltd [2002] EWHC 367 (Cth) ))
  
-##Defences+## Defences 
 + 
 +There are a number of defences which apply to passing off. 
  
-There are a number of defences which apply to passing off. These include: ​+These include: ​
  
 * Honest concurrent use; * Honest concurrent use;
Line 282: Line 319:
 * Consent; * Consent;
 * Shared goodwill; and * Shared goodwill; and
-* Effective use of a disclaimer/​sufficiently distinguishing the defendant'​s goods from the plaintiff'​s. ​+* Effective use of a disclaimer/​sufficiently distinguishing the defendant'​s goods from the plaintiff'​s ​goods
  
 ## Passing Off Outside “Trade or Commerce” ## Passing Off Outside “Trade or Commerce”
Line 308: Line 345:
  
 ### Elements ### Elements
 +
 The elements of passing off for character merchandising and celebrity endorsements are:​((*Irvine v Talksport Ltd* (2002) 57 IPR 621)) The elements of passing off for character merchandising and celebrity endorsements are:​((*Irvine v Talksport Ltd* (2002) 57 IPR 621))
  
Line 328: Line 366:
  
 __*Pacific Dunlop Ltd v Hogan* [1989] FCA 185**__ __*Pacific Dunlop Ltd v Hogan* [1989] FCA 185**__
 +
 Beaumont J said:  Beaumont J said: 
  
-'The question for the judge to decide in the present case was whether a significant section would be misled into believing, contrary to the fact, that a commercial arrangement had been concluded between the first respondent and the appellant under which the first respondent agreed to the advertising.+"The question for the judge to decide in the present case was whether a significant section would be misled into believing, contrary to the fact, that a commercial arrangement had been concluded between the first respondent and the appellant under which the first respondent agreed to the advertising".
  
 Burchett J said:  Burchett J said: 
  
->The consumer is moved by a desire to wear something belonging in some sense to Crocodile Dundee (who is perceived as a persona, almost an avatar, of Mr Hogan). The arousal of that feeling by Mr Hogan himself could not be regarded as misleading, for then the value he promises the product will have is not in its leather, but in its association with himself. When, however, an advertisement he did not authorise makes the same suggestion, it is misleading; for the product sold by that advertisement really lacks the one feature the advertisement attributes to it.+>"The consumer is moved by a desire to wear something belonging in some sense to Crocodile Dundee (who is perceived as a persona, almost an avatar, of Mr Hogan). The arousal of that feeling by Mr Hogan himself could not be regarded as misleading, for then the value he promises the product will have is not in its leather, but in its association with himself. When, however, an advertisement he did not authorise makes the same suggestion, it is misleading; for the product sold by that advertisement really lacks the one feature the advertisement attributes to it".
  
 __*Twentieth Century Fox Corporation v The South Australian Brewing Co* [1996] FCA 1484__ __*Twentieth Century Fox Corporation v The South Australian Brewing Co* [1996] FCA 1484__
 Per Tamberlin J:  Per Tamberlin J: 
  
-There is no necessity to demonstrate that the viewer or consumer must think in specific terms of permission or allowance in order to constitute deceptive conduct. The intentional use of the name “Duff Beer” which produces the false association is sufficient …+"There is no necessity to demonstrate that the viewer or consumer must think in specific terms of permission or allowance in order to constitute deceptive conduct. The intentional use of the name “Duff Beer” which produces the false association is sufficient …"
  
  
-###Examples of Celebrity Endorsements+### Examples of Celebrity Endorsements
  
 __*Henderson v Radio Corp Pty Ltd* (1960) 1A IPR 620__ __*Henderson v Radio Corp Pty Ltd* (1960) 1A IPR 620__
Line 351: Line 390:
 Northrop J said:  Northrop J said: 
  
->The groups and members of groups receiving the poster would have been aware that the poster was but one of many published and distributed by Australian Airlines depicting sporting activities in which, mainly, the persons whose photographs appeared were non-celebrities. On a true analysis, the poster should be described as promoting excellence in sport and the desirability of participating in sport.+>"The groups and members of groups receiving the poster would have been aware that the poster was but one of many published and distributed by Australian Airlines depicting sporting activities in which, mainly, the persons whose photographs appeared were non-celebrities. On a true analysis, the poster should be described as promoting excellence in sport and the desirability of participating in sport".
  
 __*Talmax Pty Ltd v Telstra Corporation Ltd* [1997] 2 Qd R 444__ __*Talmax Pty Ltd v Telstra Corporation Ltd* [1997] 2 Qd R 444__
 +
 An advertisement (including an article) promoting the Telecom Australian Open Swimming Championships and which featured a picture of Kieran Perkins suggested to the ordinary reader that he was endorsing Telecom products/​services or had consented to the article and that he was a member of the Telecom Dolphins, which he was not. An advertisement (including an article) promoting the Telecom Australian Open Swimming Championships and which featured a picture of Kieran Perkins suggested to the ordinary reader that he was endorsing Telecom products/​services or had consented to the article and that he was a member of the Telecom Dolphins, which he was not.
  
 __*Irvine v Talksport Ltd* [2002] EWHC 367 (Ch)__ __*Irvine v Talksport Ltd* [2002] EWHC 367 (Ch)__
 +
 Laddie J could not conceive of a clearer example of endorsement than the manner in which the defendant had used Eddie Irvine’s image, namely the use of a ‘doctored’ image of Irvine so as to make him appear to be holding a Talksport Radio and placing the said image on the front cover of their brochure. Laddie J could not conceive of a clearer example of endorsement than the manner in which the defendant had used Eddie Irvine’s image, namely the use of a ‘doctored’ image of Irvine so as to make him appear to be holding a Talksport Radio and placing the said image on the front cover of their brochure.
  
 __*Buttrose & Anor v The Senior’s Choice (Australia) Pty Ltd & Anor*  [2013] FCCA 2050__ __*Buttrose & Anor v The Senior’s Choice (Australia) Pty Ltd & Anor*  [2013] FCCA 2050__
 +
 The defendants had no reasonable prospect of defending claims of copyright infringement,​ passing off and breaches of the ACL with respect to their use of an image of Buttrose together with a link to an interview she had done with the ABC The defendants had no reasonable prospect of defending claims of copyright infringement,​ passing off and breaches of the ACL with respect to their use of an image of Buttrose together with a link to an interview she had done with the ABC
  
 ## Passing Off and Misleading and Deceptive Conduct ## Passing Off and Misleading and Deceptive Conduct
- Passing off protects reputation and the legitimate rights and business ​intersts ​of traders. ​ Consumer protection (misleading/​deceptive conduct) legislation protects consumers from being misled or deceived. ​+ 
 + Passing off protects reputation and the legitimate rights and business ​interests ​of traders. ​ Consumer protection (misleading/​deceptive conduct) legislation protects consumers from being misled or deceived. ​
  
  
Line 386: Line 429:
  
 ### Advantages of Trade Mark Claim over Passing Off ### Advantages of Trade Mark Claim over Passing Off
-With trade mark infringement,​ there is no need to prove reputation. ​ Defendants in trade mark actions cannot rely on disclaimers to the same extent as in passing off. Additional damages for trade mark infringement now available under new s 126(2) TMA – not available for passing off. Trade mark law will be considered in the following chapters in more detail. ​+ 
 +With trade mark infringement,​ there is no need to prove reputation. ​ Defendants in trade mark actions cannot rely on disclaimers to the same extent as in passing off. Additional damages for trade mark infringement now available under new s 126(2) ​//TMA// – not available for passing off. Trade mark law will be considered in the following chapters in more detail. ​
  
  • ausip/passing-off.1540874950.txt.gz
  • Last modified: 10 months ago
  • (external edit)