Passing OffLPAB Summer Session

Therese Catanzariti

some signs cannot be registered◦ get-up◦ descriptive◦ colours, shapes (esp pre-1995 Trade Mark Act)◦ town names (Thredbo)

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

why

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

Reckitt & Colman Products v Borden Inc

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.

elements – Ervan Warnik

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

Elements - ConAgra

broader than commercial

commercial individuals

◦ Henderson professional ballroom dancers

church

reputation - scope

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.”

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

reputation - proof

need to show public associate product/service with a particular ‘source’ difficult if words descriptive need to show that words acquired a “secondary meaning” so more than

descriptive

McCain Foods v County Fair Foods oven chips

Hornsby Building Information Centre v Sydney Building Information Centre

“Building information centre”

Kosciuszko Thredbo v Thredbonet Marketing

The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe

reputation – descriptive words

Kosciuszko Thredbo v Thredbonet Marketing

KT national park lessee in national park incl Thredbo

KT claim considerable goodwill and reputation in Thredbo village◦ trade under the name “Thredbo Alpine Village”◦ manage and service the amenities at the village;◦ operate the Thredbo ski lift, ski school and various other activities; ◦ manage the Thredbo Alpine Hotel and other accommodation in the village;◦ provide central accommodation booking service,tourist information centre=> unique position of control over resort, like Disneyland 

Thredbonet manage and lease rental accommodation in Thredbo Thredbonet use “Thredbo” in domain names, company and

business names, and on their website

Thredbo

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”

reputation – local presence

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.

misrepresentation

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

misrepresentation

Name Pseudonym Image

Fictitious Character◦ Telstra v Sun Alliance (Goggomobil)◦ Twentieth Century Fox v Lion Nathan (Duff Beer)◦ Hogan v Pacific Dunlop (Crocodile Dundee)

indicia

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

Indicia – get-up

“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.”

Telstra v Royal Insurance

Use of the word “ProCAD” in start up screen

The word ProCAD had no secondary meaning

The word ProCAD not so associated with the Plaintiffs that ANY use of the word was automatically associated with the Plaintiffs

JRC v Cummings

Black flags with Arabic writing

During the Lindt siege, as soon as the flag was put in the Lindt café window

=> ISIS=> terrorism

examples of secondary meaning

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

Misrepresentation – source of product

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.

Misrepresentation – association, sponsorship, endorsement

Honey v Australian Airlines Gary Honey athlete – no association that AA license image to

Christian church

10th 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

sponsorship, endorsement

“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

character merchandising

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 registerNo disclaimer at front of storeNo disclaimer in advertising material

Mars Australia v Sweet Rewardsthe “distinguishing feature” of the Sweet Rewards

product was the trade mark “Delfi”

disclaimers

Please note this is NOT the official website of the owner and operator of the Thredbo Alpine Village or the Thredbo Ski Resort, Kosciuszko Thredbo Pty Ltd, and is not approved, endorsed or sponsored by them.

The ordinary, reasonable consumer who came upon the home page of www.thredbo.com would have seen, depending on when he or she accessed it, the first or second disclaimer in the middle of the page.  Each disclaimer appeared under a recognisable, distinctive heading “About Thredbo.com”.  It did not have the appearance, as asserted by the appellants, of being “buried in the text”.

A consumer who was concerned about the entity with which he or she was dealing could be expected to read the short text under that heading.

Thredbonet disclaimer

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.

NOT misappropriation

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

ambush marketing

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

statute – s52 TPA/s18 ACL

A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive

s52 TPA / s18 ACL

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)

s18 Australian Consumer Law

Campomar v Nikeconsider members of a class to which the conduct is directed"ordinary" or "reasonable" members of classwhether 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 Puxunot protect persons who fail to take reasonable care of their

own interests

misleading or deceptive - who

whether ordinary or reasonable members of the classes of consumers or prospective purchasers of the relevant goods or services.would, or would be likely to, understand that any of the respondents’ impugned uses of the word “Thredbo” conveyed to them that they were dealing with the appellants or one of them

Nature of product – accommodation - consumer of Thredbo accommodation need to pay a “not insignificant amount of

money” - the ordinary reasonable consumer looking for holiday accommodation at a resort

such as Thredbo would be careful about making a selection of the provider, the accommodation and the price

Evidence of confusion - Mr Brooks was prudent and careful and he was confusedBUT no suggestion confusion was widespread or such as would have caused an

ordinary reasonable consumer, as a member of a class, to be misled or deceived into associating the respondents’ business with that of the appellants, or that such a result was likely.

Thredbo

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.

misleading or deceptive - intention

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

misleading and deceptive

“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”

Campomar v Nike

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

s29 Australian Consumer Law

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)

ACL remedies