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ausip:passing-off [2018/11/02 14:01]
jessiej_87 Formatting
ausip:passing-off [2020/04/15 12:22] (current)
117.20.69.143
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 There is no strict definition of what constitutes the tort of passing off as there are sufficient nooks and crannies to make the cause of action flexible. There is no strict definition of what constitutes the tort of passing off as there are sufficient nooks and crannies to make the cause of action flexible.
  
-Lord Oliver in *Reckitt & Coleman ​v Borden* [1990] RPC 341 stated that:+Lord Oliver in *Reckitt & Colman ​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".
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 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.  ​ 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]))
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 ### 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 & Colman*)) 
  
-There is no need for plaintiff to be the only source of the goodwill attached to a particular trade indicia. The plaintiff may be one of many, perhaps hundreds who share in the goodwill attached to a particular indicia – ie *Advocaat case* and *Champagne Case* – the goodwill attached to Advocaat and Champagne respectively were shared by many manufactures. ((*Reckitt & Coleman*))  Two traders may also be honest concurrent users of particular indicia, in which case each will not normally have an action against the other. This is because the first trader will not normally have had a sufficient reputation at the time the second-comer had also begun trading under the name. +There is no need for plaintiff to be the only source of the goodwill attached to a particular trade indicia. The plaintiff may be one of many, perhaps hundreds who share in the goodwill attached to a particular indicia – ie *Advocaat case* and *Champagne Case* – the goodwill attached to Advocaat and Champagne respectively were shared by many manufactures. ((*Reckitt & Colman*))  Two traders may also be honest concurrent users of particular indicia, in which case each will not normally have an action against the other. This is because the first trader will not normally have had a sufficient reputation at the time the second-comer had also begun trading under the name. 
    
  
-### 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.
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 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.
  
-__*Reckitt & Coleman ​Products Ltd v Borden Inc* (1990) 17 IPR 1__+__*Reckitt & Colman ​Products Ltd v Borden Inc* (1990) 17 IPR 1__
  
-Facts: Since 1956 Reckitt & Coleman ​sold lemon juice under the name JIF. The product was sold in a plastic squeeze container in the size, shape and colour resembling a lemon. The word JIF was embossed on the side of the container. Attached to the top of the lemon was a green triangular label with the word JIF prominently displayed. Reckitt & Coleman ​had packaged its JIF lemon juice in this way since 1956. The Defendant (who had previously sold bottled lemon juice under the trade mark ReaLemon) sought to repackage its product in a lemon shaped container similar to that used by Reckitt & Coleman. It had developed three prototypes of the lemon shaped containers, which they were considering adopting as their new packaging. Upon discovering the first prototype, Reckitt & Coleman ​brought an action for passing off against the Defendant. Upon discovering the second and third prototype, Reckitt & Coleman ​commenced another action.+Facts: Since 1956 Reckitt & Colman ​sold lemon juice under the name JIF. The product was sold in a plastic squeeze container in the size, shape and colour resembling a lemon. The word JIF was embossed on the side of the container. Attached to the top of the lemon was a green triangular label with the word JIF prominently displayed. Reckitt & Colman ​had packaged its JIF lemon juice in this way since 1956. The Defendant (who had previously sold bottled lemon juice under the trade mark ReaLemon) sought to repackage its product in a lemon shaped container similar to that used by Reckitt & Colman. It had developed three prototypes of the lemon shaped containers, which they were considering adopting as their new packaging. Upon discovering the first prototype, Reckitt & Colman ​brought an action for passing off against the Defendant. Upon discovering the second and third prototype, Reckitt & Colman ​commenced another action.
  
-Issues: (1) Have Reckitt & Coleman ​proved that their get-up under which their lemon juice was sold has become associated in the minds of substantial numbers of the purchasing public specifically and exclusively with their JIF lemon juice? (2) If yes, does the get-up under which the Defendants propose to market their lemon juice amount to a representation by the Defendants that the juice which they sell is JIF lemon juice?+Issues: (1) Have Reckitt & Colman ​proved that their get-up under which their lemon juice was sold has become associated in the minds of substantial numbers of the purchasing public specifically and exclusively with their JIF lemon juice? (2) If yes, does the get-up under which the Defendants propose to market their lemon juice amount to a representation by the Defendants that the juice which they sell is JIF lemon juice?
  
-Held: At Trial Walton J found the action for passing off had been made out in both cases (noting that the Defendants had acted with fraudulent intent). Walton J relied on the clear evidence that the purchasing public had come to associate the get-up of the lemon shaped container with Reckitt & Coleman’s JIF lemon juice. There was also evidence of a substantial body of brand loyalty for the JIF brand and that the public who purchased lemon juice in plastic containers did not read the label, but looked only for the plastic lemon which they could assume was JIF lemon juice. The Defendant appealed to the Court of Appeal which held that Walton’s J findings could not be interfered with. The Court of Appeal supported the trial judges finding that the lemon shaped contained had acquired a secondary meaning as indicating that the source of the product was JIF and that only Reckitt & Coleman ​had the exclusive right to use that get-up. The Defendants further appealed to the House +Held: At Trial Walton J found the action for passing off had been made out in both cases (noting that the Defendants had acted with fraudulent intent). Walton J relied on the clear evidence that the purchasing public had come to associate the get-up of the lemon-shaped container with Reckitt & Colman’s JIF lemon juice. There was also evidence of a substantial body of brand loyalty for the JIF brand and that the public who purchased lemon juice in plastic containers did not read the label, but looked only for the plastic lemon which they could assume was JIF lemon juice. The Defendant appealed to the Court of Appeal which held that Walton’s J findings could not be interfered with. The Court of Appeal supported the trial judges finding that the lemon-shaped contained had acquired a secondary meaning as indicating that the source of the product was JIF and that only Reckitt & Colman ​had the exclusive right to use that get-up. The Defendants further appealed to the House 
-of Lords, with Reckitt & Coleman ​cross appealing (although the cross appeal was not heard).+of Lords, with Reckitt & Colman ​cross appealing (although the cross appeal was not heard).
  
 The appeal was dismissed by the House of Lords, which agreed with the decision of the Court of Appeal affirming the permanent injunction against the Defendant preventing him from selling its lemon juice in the proposed packaging (Lord Bridge of Harwich; Lord Brandon of Oakbrook; Lord Oliver of Aylmerton; Lord Goff of Chieveley; Lord Jauncey of Tullichettle). The appeal was dismissed by the House of Lords, which agreed with the decision of the Court of Appeal affirming the permanent injunction against the Defendant preventing him from selling its lemon juice in the proposed packaging (Lord Bridge of Harwich; Lord Brandon of Oakbrook; Lord Oliver of Aylmerton; Lord Goff of Chieveley; Lord Jauncey of Tullichettle).
  
  
-**Video overview by Jess Walker on [Reckitt & Coleman ​Products Ltd v Borden Inc](youtube>7GheuARYYEU)**+**Video overview by Jess Walker on [Reckitt & Colman ​Products Ltd v Borden Inc](https://​www.youtube.com/​watch?​v=7GheuARYYEU)**
  
  
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 ### 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 & Colman; 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. 
  
 However, using a descriptive term, rather than an inventive term, will require much more effort on the part of a plaintiff to establish a secondary meaning that the term is exclusively distinctive of the plaintiff’s goods. However, using a descriptive term, rather than an inventive term, will require much more effort on the part of a plaintiff to establish a secondary meaning that the term is exclusively distinctive of the plaintiff’s goods.
  
-For example in *Reckitt & Coleman*, the court accepted that the shape of a lemon was used exclusively as indicating that the goods were that of the plaintiff. Other examples of descriptive words having acquired secondary significance include: ​+For example in *Reckitt & Colman*, the court accepted that the shape of a lemon was used exclusively as indicating that the goods were that of the plaintiff. Other examples of descriptive words having acquired secondary significance include: ​
  
 * '​Special Brew’ for beer. * '​Special Brew’ for beer.
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 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))
  
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-**Video overview by Caroline Burrows on [Mars Australia Pty Ltd v Sweet Rewards Pty Ltd](youtube>1A4IGR7x0EU)**+**Video overview by Caroline Burrows on [Mars Australia Pty Ltd v Sweet Rewards Pty Ltd](https://​www.youtube.com/​watch?​v=1A4IGR7x0EU)**
  
  
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-**Video overview by Billy Young on [Character Merchandising](youtube>y4pT18IEf2s)**+**Video overview by Billy Young on [Character Merchandising](https://​www.youtube.com/​watch?​v=y4pT18IEf2s)**
  
  
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