Passing Off and s18 ACL
Passing off – ‘classical trinity’
ConAgra Inc – P establish three elements
1) Goodwill and business reputation attached to the goods or services that the plaintiff supplies (‘in
the minds of the public’: Reckitt)
2) Misrepresentation by the defendant to the public that misleads, or is likely to mislead, the public
that the goods or services that the defendant supplies are those of the plaintiff (‘whether or not
intentional’: Reckitt – ‘reasonably foreseeable consequence’: Erven Warnink v J Townsend & Sons
(Hull) Ltd)
3) That the plaintiff suffers or is likely to suffer actual damage by reason of the defendant’s
misrepresentation
Scope of the tort
• non-deceptive appropriation of reputation remains largely untouched by the common law – ‘not
concerned, as such, with any unfairness of competition in trade as between two traders’: Hornsby
Building Information Centre
• Misrepresentation resulting in consumer deception is the core of the tort but is not sufficient in itself
– statements by one business about a competitor’s product which, although false, do not imply any
connection between the two businesses, are not captured by this tort – [see tort of injurious
falsehood]
Element 1 - Reputation/Goodwill
(essential for passing off --- not essential but highly relevant for s18 ACL)
Reputation developed in their products or services in the mind of the relevant section of the public (consider
relevant users and geography), which existed at the date when the defendants conduct occurred?
Plaintiff must prove that they have a reputation in some feature of their goods or services that
consumers have become accustomed to relying on to identify their goods or services
reputation is a question of fact: Peter Bodum A/S v DKSH Australia Pty Ltd
Key factor in determining reputation: Extent to which the relevant names, marks, get-up or other
key feature, have been exposed to the relevant members of the public in both a user and
location sense at the relevant time (i.e., more than ‘just a few’ … ‘substantial’ amount … ‘not
insignificant’)
Relevant Public?
Territorial nature of reputation / goodwill (*geographical assessment)
Ø Dairy Vale Metro Co-operative Ltd v Brownes Dairy Ltd… [s52 TPA claim, similar to s18 ACL
and case law] Western Australian consumers could not have been misled or deceived into
inferring that the defendant’s business was connected with the plaintiff’s, since at the time
when ‘Temptation’ appeared nobody in WA had heard of ‘Eve’
, Is there a sufficient level of ‘distinctiveness’ in the thing relied on to show reputation?
Plaintiff - prove a sufficient level of distinctiveness in their name, mark or get-up that consumers
recognise as the mark that identifies the plaintiff’s goods or services
Descriptive words …
Ø Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd
(*‘Sydney’ to ‘Hornsby’ small change is legitimate. Sydney Building had been operating for 30
yrs, want to challenge Hornsby, no significant distinctiveness in the term building information
center to proect. building information centers is not distinctive enough to protect.) … and
Ø … B M Auto Sales Pty Ltd v Budget Rent A Car System Pty Ltd (*’Budget’ had developed
distinctiveness overtime or under TMA, couldn’t be used by competors in that relevant trade)
Design features
Ø … Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd … s52 TPA claim
- Defendant’s range of furniture was virtually identical to a range manufactured and
promoted by the plaintiff Parkdale
- Court rejected the plaintiff’s s claim (*there was little opportunity for change in that
design, and they should protect their design under the Designs Act)
- Decision based squarely on the principle that, where a design is involved which could have
been registered under the Designs Act but was not, the common law or s52 of the TPA
(now s18 ACL) should not afford protection as a means of creating an alleged monopoly
over its use
- … would destroy the ‘careful balance’ established by the patents and designs legislation
(*if the protection was otherwise inappropriately extended under the common law
Element 2 - Misrepresentation
What is the ‘relevant conduct’ or (mis)representation? Was it done in the course of trade or commerce?
Court must consider whether a defendant’s use of a similar name, mark, get-up or style, to
that of the plaintiff’s has misled the public into thinking that the defendant’s goods or services
emanate from the plaintiff or that there is some commercial connection between the plaintiff
and the defendant
Types:
1. the defendant passing off its goods as being those of the plaintiff (‘classic’ passing off)
2. the defendant representing the plaintiff’s goods to be its own (‘reverse/inverse’ passing
off)
3. representation of some other sort of connection between the plaintiff and defendant
(‘other’ passing off)
- question of fact, consider in the position of ordinary or reasonable consumers
- For injunctive relief (generally): The plaintiff does not need to show that the defendant
intended to deceive the public – It is sufficient that the defendant’s behaviour does or may
foreseeably result in deception
- For liability (generally): intention required – Spalding v Gamage: ‘calculated to deceive’ the
relevant public – substantial damages and account of profits generally require proof of
fraud (balance of authority – not entirely settled in case law)
ConAgra –no goodwill - no amount of wicked intent will suffice, intention to deceive cannot
maintain an action for passing off in the absence of proof of reputation
legal principles:
• Local connection
Passing off – ‘classical trinity’
ConAgra Inc – P establish three elements
1) Goodwill and business reputation attached to the goods or services that the plaintiff supplies (‘in
the minds of the public’: Reckitt)
2) Misrepresentation by the defendant to the public that misleads, or is likely to mislead, the public
that the goods or services that the defendant supplies are those of the plaintiff (‘whether or not
intentional’: Reckitt – ‘reasonably foreseeable consequence’: Erven Warnink v J Townsend & Sons
(Hull) Ltd)
3) That the plaintiff suffers or is likely to suffer actual damage by reason of the defendant’s
misrepresentation
Scope of the tort
• non-deceptive appropriation of reputation remains largely untouched by the common law – ‘not
concerned, as such, with any unfairness of competition in trade as between two traders’: Hornsby
Building Information Centre
• Misrepresentation resulting in consumer deception is the core of the tort but is not sufficient in itself
– statements by one business about a competitor’s product which, although false, do not imply any
connection between the two businesses, are not captured by this tort – [see tort of injurious
falsehood]
Element 1 - Reputation/Goodwill
(essential for passing off --- not essential but highly relevant for s18 ACL)
Reputation developed in their products or services in the mind of the relevant section of the public (consider
relevant users and geography), which existed at the date when the defendants conduct occurred?
Plaintiff must prove that they have a reputation in some feature of their goods or services that
consumers have become accustomed to relying on to identify their goods or services
reputation is a question of fact: Peter Bodum A/S v DKSH Australia Pty Ltd
Key factor in determining reputation: Extent to which the relevant names, marks, get-up or other
key feature, have been exposed to the relevant members of the public in both a user and
location sense at the relevant time (i.e., more than ‘just a few’ … ‘substantial’ amount … ‘not
insignificant’)
Relevant Public?
Territorial nature of reputation / goodwill (*geographical assessment)
Ø Dairy Vale Metro Co-operative Ltd v Brownes Dairy Ltd… [s52 TPA claim, similar to s18 ACL
and case law] Western Australian consumers could not have been misled or deceived into
inferring that the defendant’s business was connected with the plaintiff’s, since at the time
when ‘Temptation’ appeared nobody in WA had heard of ‘Eve’
, Is there a sufficient level of ‘distinctiveness’ in the thing relied on to show reputation?
Plaintiff - prove a sufficient level of distinctiveness in their name, mark or get-up that consumers
recognise as the mark that identifies the plaintiff’s goods or services
Descriptive words …
Ø Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd
(*‘Sydney’ to ‘Hornsby’ small change is legitimate. Sydney Building had been operating for 30
yrs, want to challenge Hornsby, no significant distinctiveness in the term building information
center to proect. building information centers is not distinctive enough to protect.) … and
Ø … B M Auto Sales Pty Ltd v Budget Rent A Car System Pty Ltd (*’Budget’ had developed
distinctiveness overtime or under TMA, couldn’t be used by competors in that relevant trade)
Design features
Ø … Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd … s52 TPA claim
- Defendant’s range of furniture was virtually identical to a range manufactured and
promoted by the plaintiff Parkdale
- Court rejected the plaintiff’s s claim (*there was little opportunity for change in that
design, and they should protect their design under the Designs Act)
- Decision based squarely on the principle that, where a design is involved which could have
been registered under the Designs Act but was not, the common law or s52 of the TPA
(now s18 ACL) should not afford protection as a means of creating an alleged monopoly
over its use
- … would destroy the ‘careful balance’ established by the patents and designs legislation
(*if the protection was otherwise inappropriately extended under the common law
Element 2 - Misrepresentation
What is the ‘relevant conduct’ or (mis)representation? Was it done in the course of trade or commerce?
Court must consider whether a defendant’s use of a similar name, mark, get-up or style, to
that of the plaintiff’s has misled the public into thinking that the defendant’s goods or services
emanate from the plaintiff or that there is some commercial connection between the plaintiff
and the defendant
Types:
1. the defendant passing off its goods as being those of the plaintiff (‘classic’ passing off)
2. the defendant representing the plaintiff’s goods to be its own (‘reverse/inverse’ passing
off)
3. representation of some other sort of connection between the plaintiff and defendant
(‘other’ passing off)
- question of fact, consider in the position of ordinary or reasonable consumers
- For injunctive relief (generally): The plaintiff does not need to show that the defendant
intended to deceive the public – It is sufficient that the defendant’s behaviour does or may
foreseeably result in deception
- For liability (generally): intention required – Spalding v Gamage: ‘calculated to deceive’ the
relevant public – substantial damages and account of profits generally require proof of
fraud (balance of authority – not entirely settled in case law)
ConAgra –no goodwill - no amount of wicked intent will suffice, intention to deceive cannot
maintain an action for passing off in the absence of proof of reputation
legal principles:
• Local connection
