some signs cannot be registered ◦ get-up ◦ descriptive ◦ colours, shapes (esp pre-1995 Trade Mark Act) Reddaway Ltd. v. George Banham 1896 “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
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 commercial commercial individuals ◦ Henderson professional ballroom dancers church
Conagra v McCain Foods 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.”
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
public associate product/service with a particular ‘source’ difficult if descriptive McCain Foods v County Fair Foods oven chips Hornsby Building Information Centre v Sydney Building Information Centre “Building information centre”
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  FCAFC 59 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 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
Name Pseudonym Image Fictitious Character ◦ Telstra v Sun Alliance (Goggomobil) ◦ Twentieth Century Fox v Lion Nathan (Duff Beer) ◦ Hogan v Pacific Dunlop (Crocodile Dundee)
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
“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.”
Cadbury Schweppes v Pub Squash Lemon squash Reckitt & Colman Products Ltd v Borden Inc Lemon juice Bollinger v Costa Brava Wine Co Limited Champagne Mars Australia v Sweet Rewards malt balls
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 athlete – no association that AA license image to Christian church 10 th Cantannae Sue Smith journalist – no association Talmax Pty Ltd v Telstra Corporation 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
“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) Disclaimer not taken seriously because of nature of character Britt Allcroft v Miller (Thomas Shop) Disclaimer at cash register No disclaimer at front of store No disclaimer in advertising material Mars Australia v Sweet Rewards the “distinguishing feature” of the Sweet Rewards product was the trade mark “Delfi”
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.
advertisers associate with event without paying any sponsorship fee 1984 Olympics – Kodak sponsors TV broadcast, even though Fuji is official sponsor of Olympic Games 1998 FIFA World Cup - Nike sponsor teams, even though Adidas is official sponsor 2010 FIFA world cup – Dutch brewer gave away orange clothes to supporters even though Budweiser official sponsor 2012 Olympics – Nike “Find Greatness” – the other Londons http://mumbrella.com.au/nike-olympics-ambush-ad-touches- down-in-australia-106305
operation of s52 is not restricted by the common law principles relating to passing- off section provides the public with wider protection from deception than common law statute provides an additional remedy Parkdale v Puxu
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 - Pecuniary penalty (s29) s232 – injunctions s236 - damages s237 – compensation order s243 – other orders ◦ Declare contract void ◦ Refuse enforce contract s246 non-punitive orders ◦ Community service orders ◦ Direction to establish compliance program / training program ◦ Corrective advertising s247 – adverse publicity s248 – disqualify managing corporations (s29)