#8565 - Overview Of S 18 Passing Off And Trademarks - Foundations of Intellectual Property

Four requirements

1. A person

2. In trade or commerce

3. Engage in conduct

4. Misleading or deceptive (must be more than confusing): Taco Bell

On (iv) ‘misleading or deceptive’

1. Identify relevant section(s) of public by reference to whom the question of whether conduct is, or is likely to be, misleading or deceptive falls to be tested…

2. Consider everyone in that section: Once the relevant section of the public is established, the matter is to be considered by reference to all in it, ‘dumb, smart, poor, rich, male, female’

3. Objective test: Third – test is objective – subjective evidence can be persuasive but.

4. Inducement? – inquire why misrep has arisen. Because of the D’s misleading or deceptive conduct?

Three requirements: (1) Goodwill (2) Misrepresentation (3) Damage [(4) Defence?]

Re (1) – Goodwill

1. Reputation

2. As a trader (Da )

3. Amounts to goodwill (attractive force that brings in custom: IRC v Muller)

4. Extends as far as consumer’s minds are

5. Temporal element – can exist from before trading (Talbot) to after (AdLibClub)

6. Consider: shared? (Bollinger)

7. Owned?

Indicia of goodwill: Get up/shape (Jif Lemons), colour (Cadbury), names, advertising imagery (Pub Squash), characters (Hogan)

Test: whether P can prove consumers identify those indicia with its g/s. Ie indicia has derived a distinctive character which market recognizes: Cadbury

• Descriptive indicia: need to establish secondary reputation: Reddaway - hard to quickly prove this has been acquired (McCain; County Sound) or if same indicia used by other traders (Nutrientwater

Req (2): Misrepresentation:

1. Misrep on source, quality, or association with someone/thing (eg Duff Beer; Hogan)

2. involving indicia of goodwill

3. likely to deceive substantial numbers of the group to whom misrep directed – being those likely affected by the misrep (Taco Bell) (some consumers sophisticated: Bodum)

4. without disclaimer

5. no req of sphere of activity

6. no req of intention to deceive: Sydneywide

re (c): misrepresentation issue:

1. Identify the group likely to be affected by the misrepresentation: Taco

2. Then consider all persons in that class: Taco. Consider the ‘ordinary’ or ‘reasonable’ member of the class when considering the likely effect of the misrepresentation on the hypothetical person in that class: Campomar

   1. Exclude those who are ‘extreme cases’ – ie extreme or fanciful persons: Nike

3. Consider circumstances: same sorts of products? Same trade channels? Lots of indicia used? Customers can be sophisticated: Bodum

4. Focus on significant parts of sign – eg in Neutrogena ‘neut’ implies neutral, which was generic, likely to be used by all traders.

5. Then show that substantial (Neutrogena) or reasonably significant numbers of the relevant class likely to have been misled: .au Domain

   1. Substantial is not defined: if something bought by everyone, probably need larger proportion – but if aeroplanes, may only need few people deceived.

6. If misrep is made to small class of persons, and so you can’t identify a hypothetical member of the group, determine likely effect on group: Domain

7. Must not only be confusion but also inducement of that confusion by the D’s sign: Neutrogena

8. No req for same sphere of activity: but can be useful/make it likely theres passing off Henderson

Proving deception: FCA Practice Note 13.

(3) Damage: loss of existing or future trade/profit, licensing revenues to marks, damage to reputation, dilution (Taiitinger (eg dilution))

- Fraud not required but good for damages: BM Auto

(4) Defence: concurrent use - can dispel confusion that only one trader has right: Habib)

5 issues: A registration, B opposition, C revocation, D infringe, E defences. [note process]

1. Registration?

1. Formalities (sign (s 6, 17)), in approved form (reg 4.1-2), owned (s 26(1)(a), 28), use or intent to use (S 27(1)(b)), graphical rep of sign (s 27(3)(a), 40)), g/s nominated in classes .(s 27(3)(b).

2. Capable of distinguishing: s 41

   1. Inherently adapted to distinguish? (3)

   2. Capable of distinguishing? (5)

   3. Actually distinctive? (6)

3. No absolute grounds for refusal: ie:

   1. s 41: must be capable of distinguishing

   2. s 39: prohibited sign?

   3. s 42: scandalous or contrary to law

   4. s 43: likely deceive/cause confusion

4. Relative grounds – SI/DS to reg TM: s 44

   1. Is it SI/DS with a reg TM, used for similar goods/closely related services as that reg?: (1) goods, (2) services.

   2. S 44(4): Exception for prior use?

   3. S 44(3): honest concurrent use?

2. Opposed? s 57, 58, 58A, 59, 60, 61 and 62A

1. Same grounds as rejecting: S 57

2. Applicant not owner: s 58

3. SI/DS mark has had continuous use: s 58A

4. Not intending to use TM in Aust: s 59

5. Similar to well-known mark in aust: s 60

6. False geographical indication: s 61

7. Defective: s 62

8. Bad faith: s 62A

3. Revoked? Under s 92(4)(a) and (b)

1. No intent to use mark when filed + nonuse:

2. Non-use for 3 years of reg: s 92(4)(b)

4. Infringed? 3 ways: s 120(1), (2), and (3)

• Issue 1#: ‘Use as a trade mark’? s 120(1)-(3)

• Issue 2#: use in Australia? Ward

• Issue 3#: sign used substantially identical or deceptively similar to reg TM? (s 120(1)-(3)

• Issue 4#: sign used for g/s that are the same as those reg (s 120(1)), or answer the same description or are closely related? S 120(2)
  OR

• Issue 5#: Was there dilution of a well-known sign? Well-known, mark SI/DS, implies association, and adverse effect: s 120(3)

5. Defences to infringement? Under ss 122-4

1. Use in good faith? S 122

   1. Use of a personal or business name: s 122(1)(a)(i)

   2. Descriptive use: s 122(1)(b)(i)-(ii)

   3. Used to indicate purpose of g/s: s 122(1)(c)

2. Comparative advertising: s 122(1)(d)

3. D would obtain registration in own name if it were to apply for it: s 122(1)(f-(fa)

4. Use of a trademark by the trademark holder: s 122(1)(e)

5. Use with consent of reg owner: s 123

6. D has continuously used the trademark in relation to registered g/s since before the P trademark was registered: s 124

Consider process: renewal under s 75 request. Unless otherwise requested or revoked, reg will lapse 10 years after fling date: s 72(3)

(1) Goodwill – can be shared: Bollingwer

• Eg champagne growers – Taittinger; Swiss chocolate: Chocosuisse Union

(4) Defence: if each have sphere of activity with concurrent use – then no passing off: Habib

A. Registration

• Joint owners can apply for reg of a TM: s 28

• Relative grounds to refuse: s 44. But exception:

  • S 44(3): honest concurrent use?

  • S 44(4): Exception for prior use? (then see s 58A for opposition, and s 122 for defences)

28 Application by joint owners

If the relations between 2 or more persons interested in a trade mark are such that none of them is entitled to use the trade mark except:

(a) on behalf of all of them; or

(b) in relation to goods and/or services with which all of them are connected in the course of trade; the persons may together apply for its reg under subsection 27(1).