Passing Off: A Legal Remedy for Business Misrepresentation, Exercises of Business

Download Passing Off: A Legal Remedy for Business Misrepresentation and more Exercises Business in PDF only on Docsity! Sample notes Passing Off:  The tort has 3 main elements as per Reckitt and Colman Products Ltd v Borden Inc (1990) o Reputation o Misrepresentation – misleading or likely to mislead o Damage- plaintiff likely to suffer or has suffered.  The modern action in passing off has, in Australia, also been substantially subsumed within the scope of s 18 of the ACL; s 29 ‘False and misleading representations about goods and services.’ 3 competing interests within passing off case;  Paintiff is protecting the commercial flowing from his efforts and investment  Defendant in beingfree to attract purchasers for his g & s by what appears to him to be effective means  Consumers can select between g&s without misrepresentation. ‘Passing off action is a remedy for the invasion of a right of property, in the business or good will likely to be injured by the misrep. Made by passing off one person’s goods as the goods of another.’ Star Industrial Co ltd v Yap Kwee Kor (1975) REPUTATION A sufficient reputation requires that a legally significant number of people within the jurisdiction are aware of the product or service and can distinguish the product or service by reference to the indicia alleged to have been misused. • A simple trading presence in the jurisdiction appears to be a satisfactory means of establishing a reputation in the market place, Stannard v Reay [1967] RPC 589 • The level of sales does not have to be substantial; advertising to commencing a business within a jurisdiction may be sufficient, Fletcher Challenge Ltd v Fletcher Challenge Pty Ltd [1981] NSWLR 196 • It is not necessary to have commenced business activities within the jurisdiction in which a passing off action is commenced, Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 176 – can still be considered to ‘pass off’ a product within another jurisdiction. • Hansen v bickfords (Monster energy drink v ADELAIDE VERSION) – noted the impact of indirect advertising and the advertising industry moving away from relying on direct marketing techniques as their primary source. Distinctiveness: Cadbury Schweppes v the Pub Squash- the attribute misleadingly adopted by the defendant may be something other than just a name, sign, device, mark or brand. That is, it may be any aspect or other indicia of the plaintiff’s business, as long as it is distinctive of that business. Telstra Corporation Limited v Royal and Sun Alliance Insurance - secondary or suggestive advertising is that of which conjures up a brand without referring to it. Such advertising images can become established or so well known that they can create an impression of association or connection to the primary brand. Eg mcdonald arches, walking fingers for yellow pages, Ronald mcdonald, the coke bottle shape. Proof – • A sufficient reputation requires that a legally significant number of people within the jurisdiction are aware of the product or service and can distinguish the product or service by reference to the indicia alleged to have been misused • Focus on presenting the mark has been exposed to the public, in a user sense and a location sense, over the relevant period such as: - survey evidence - Consumer affidavits - sales volume - Advertising expenditure - Mentions in media - Travel habits of Australians Can descriptive words be registerable as a trademark? No, cant satisfy the requirements of distinctiveness. However, can become distinctive over time – rare – BM Auto Sales v Budget rent a car system [1976] – CANNOT EXPECT MONOPOLY OVER THE WORD TO EXTEND TO OTHER PRODUCTS –eg. Motels offering cheap accommodation. MISREPRESENTATION Am misrepresentation in passing off means conduct on the part of the trader which results in consumers coming to an erroneous conclusion about or being confused about a connection between the goods or services of that trader and those of another trader. • Passing off will have occurred where the defendant’s conduct has deceived (a) reasonable persons within the class* or (b) a significant number of people within the class* into believe that (a) the decedent's business or products are those of the plaintiff (b) Or, are associated with the plaintiff * ‘the class of consumers likely to be affected by the conduct’ • The most obvious type of passing off is where the defendant is producing a product similar to the plaintiff’s product in competition with the plaintiff and uses a name or ‘get-up’ (package, label, logo) that is so deceptively similar to the plaintiff’s that a reasonable number of customers will be confused as to the origin of the product. • Deceptive similarity