#8564 - Acl Notes - Foundations of Intellectual Property

5b S 18 ACL 1

Provision: 2

Elements of an action under s 18 2

Defences 2

Relationship with Passing off - see table in s 18 ACL handout. 3

A person shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive: s 18 ACL.

Time when you’d use s 18 with a passing off action – when someone tries to advertise that their product is associated with you when it isn’t. If they’re using a trademark they aren’t entitled to use (eg counterfeiting)

	Requirements: A person (s 18) / A corporation (s 52) In trade or commerce Engage in conduct Misleading or deceptive (more than confusing): Taco Bell (eg as to source, or quality) more on this below.
(iv) ‘misleading or deceptive’	From case law on s 52: must be more than confusing – must be misleading or deceptive Offences are on a strict liability basis – intention is irrelevant: Taco Bell Case law from Taco Bell: Q of fact: it’s a q of fact in all the circumstances whether the conduct amounts to a misrep. Q is objective. Process: First – identify relevant section(s) of public (which may be the public at large) by reference to whom the question of whether conduct is, or is likely to be, misleading or deceptive falls to be tested… Second – once the relevant section of the public is established, the matter is to be considered by reference to all who come within it, ‘including the astute and the gullible, dumb and intelligent, well-educated and poorly educated, men ,women, young, old,of all jobs’ Third – test is objective but evidence that some person has in fact formed an erroneous conclusion is admissible and may be persuasive but not essential. Fourth – necessary to inquire why proven misrep has arisen. Fundamental importance of this principle is that it is only by this investigation that the evidence of those who are shown to have been led into error can be evaluated and it can be determined whether they are confused because of the D’s misleading or deceptive conduct.
Note lack of other requirements	action complete when misleading or deceptive conduct is shown – no damage is required. Intention not necessary to obtain damages. Anyone can bring an action. Aim is to prevent misleading conduct Protects consumers against traders.

Requirements:

A person (s 18) / A corporation (s 52)
In trade or commerce
Engage in conduct
Misleading or deceptive (more than confusing): Taco Bell (eg as to source, or quality) more on this below.

(iv) ‘misleading or deceptive’

From case law on s 52:

must be more than confusing – must be misleading or deceptive
Offences are on a strict liability basis – intention is irrelevant: Taco Bell

Case law from Taco Bell:

Q of fact: it’s a q of fact in all the circumstances whether the conduct amounts to a misrep.
Q is objective.
Process:
- First – identify relevant section(s) of public (which may be the public at large) by reference to whom the question of whether conduct is, or is likely to be, misleading or deceptive falls to be tested…
- Second – once the relevant section of the public is established, the matter is to be considered by reference to all who come within it, ‘including the astute and the gullible, dumb and intelligent, well-educated and poorly educated, men ,women, young, old,of all jobs’
- Third – test is objective but evidence that some person has in fact formed an erroneous conclusion is admissible and may be persuasive but not essential.
- Fourth – necessary to inquire why proven misrep has arisen. Fundamental importance of this principle is that it is only by this investigation that the evidence of those who are shown to have been led into error can be evaluated and it can be determined whether they are confused because of the D’s misleading or deceptive conduct.

Note lack of other requirements

action complete when misleading or deceptive conduct is shown – no damage is required.
Intention not necessary to obtain damages.
Anyone can bring an action.
Aim is to prevent misleading conduct
Protects consumers against traders.

	reasonable mistake of fact; act or default of another person, to an accident or to some other cause beyond the D’s control, and the D took reasonable precautions and exercised due diliegence to avoid the contravention.

Notes:

S 18	Passing off
	Primarily protects traders against each other
	Aim is to protect commercial reputation a
	action brought by injured trader
	Intention will greatly affect whether there is an award of damges
	Damage or likelihood of damage is required in order to make out a case for passing off
	Defences may be: * use of one’s own name Honest concurrent use
	Remedies include: Injunctions an account of profit; and damages (including punitive damages) only awarded in fraud cases or whether behavior continues after the D was alerted to the P’s rights.
	Even if goodwill still exists after the end of trading - an intention to recommence trading may be required to make out action: Ballarat Products v Farmers Smallgoods – whereas not required under a s 18 case if the public would be deceived: Mark Foys v TVSN (Pacific)

TMA doesn’t affect law relating to passing off: S 230(1)
However in an action for passing off arising out of the use by the D of a registered trade mark:
- Of which they are the registered owner or authorized user: s 230(2)(a); AND
- That is substantially identical with, or deceptively similar to, the trade mark of the P;
  damages may not be awrded against the D if the D satisfied that court that:
- At the time when the D began...

#8564 - Acl Notes - Foundations of Intellectual Property

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