#8562 - Passing Off Action - Foundations of Intellectual Property

5a. Passing off 1

Note: Passing off’s Relationship with trade mark law : s 230 TMA 2

Cheatsheet from AG framework: 2

Passing off notes by eb 3

Overview of passing off 3

Req 1#: Goodwill = reputation + as a trader + amount to goodwill 4

(a) Reputation? 4

(b) As a trader? (Day v Brownrigg; A-G v Holy Apostolic) 4

Goodwill is indicated by ‘indicia’ of reputation: 5

Consider: if descriptive/generic indicia, does it have secondary reputation?: Reddaway; horsnby; kettle chip; orthotech 6

(d) In Australia? (Geographical requirement): ConAgra v McCain 7

(e) Temporal element: goodwill can exist from before trading (Talbot) to after (AdLibClub) 8

(f) Consider: is there shared / extended goodwill? 8

(g) Owned? 8

Req 2#: Misrepresentation: (a) misrep as to source/quality (b) involving indicia of goodwill and (c) likely to deceive significant/substantial numbers of relevant class. 10

(a) Misrepresentation as to source or quality 10

(b) Involving indicia of goodwill; 11

Note on practice of proving deceptions: survey evidence: FCA PN CM 13 13

(d) Without a sufficient disclaimer or other defence (Duff Beer) 13

(e) Note: no longer req that traders operate in same sphere of activity: Henderson 14

Req 3#: Damage 15

(a) Loss of existing trade and profit: IRC c Muller’s Margarine; Ward Group v Brodie 15

(b) Loss of future trade and profit (incl licensing revenues): Lego etc 15

(d) Damage to reputation (Henderson; Associated Newspapers; Annabel’s; Ward Group) 15

(e) Dilution 16

Appendix of passing off cases 17

List of all the big cases: 17

Frank Reddaway v George Banham 17

Jif Lemons 17

ConAgra v McCain 17

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 to use the trade mark they were unaware and had no reasonable means of finding out that the trade mark of the P was in use: s 230(2)(c); and
- That when the D became aware of the existence and nature of the P’s trade mark immediately ceased to use trade mark in relation to g/s in relation to which it was used by the P: s 230(2)(d)

Can all the elements of passing off be shown? (1) Goodwill (2) Misrepresentation (3) Damage

Definition: is one trader representing its goods/services as those of another?
Can all the elements of passing off be established?
1. Goodwill = reputation + as a trader + amount to goodwill
  1. Reputation?
  2. As a trader?
  3. Amount to goodwill (the attractive force that brings in custom). Goodwill is indicated by ‘indicia’ of reputation, such as:
    1. Get-up or shape
    2. Colour
    3. Names (made up, generic or personal)
    4. Advertising imagery or themes
    5. Trade dress or styles
2. Misrepresentation
  1. Misrepresentation as to source or quality
  2. Involving indicia of goodwill;
  3. Without a sufficient disclaimer or other defence.
  4. Note: must the traders operate in the same sphere of activity?
3. Damage
  1. Loss of existing trade and profit
  2. Loss of future trade and profit
  3. Loss of licensing revenues
  4. Damage to reputation
  5. Dilution.

The tests from Advocaat and ConAgra v McCain

Advocaat – Lord Diplock:
- a misrepresentation;
- by a trader in the course of trade;
- to prospective or ultimate customers;
- which is calculated to injure the business or goodwill of another; and
- causes actual damage to that other
As restated by Lockhart J in ConAgra v McCain
- Goodwill/reputation
- Misrepresentation; and
- Damage.

Can all the elements of passing off be established?

Goodwill = reputation + as a trader + amount to goodwill
1. Reputation?
2. As a trader?
3. Amount to goodwill (the attractive force that brings in custom). Goodwill is indicated by ‘indicia’ of reputation, such as:
  1. Get-up or shape
  2. Colour
  3. Names (made up, generic or personal)
  4. Advertising imagery or themes
  5. Trade dress or styles
Misrepresentation
1. Misrepresentation as to source or quality
2. Involving indicia of goodwill;
3. Without a sufficient disclaimer or other defence.
4. Note: must the traders operate in the same sphere of activity?
Damage
1. Loss of existing trade and profit
2. Loss of future trade and profit
3. Loss of licensing revenues
4. Damage to reputation
5. Dilution.

Reputation as a Trader?

If no business – not a trader: There might have been harm, but there was no property right in the name ‘Ashford Lodge’: Day v Brownrigg (1878)
- Mr and Mrs Day lived in Ashford Lodge. And General Brownrigg lived nextdoor in Ashford Villa – and decided to change the name to Ashford Lodge. The Days decided to sue Brownrigg. They had a house with a name they didn’t want anyone else using it.
- Judge said to go away. You may have reputation in your name btu you don’t have goodwill. Maybe if it had a business?
- No element of being a trader in the course of trade.
Charities can be ‘traders’: A-G v the Holy Apostolic & Catholic Church of the East (Assyrian) Australia NSW Parish Association: the church’s reputation was ‘essentially indistinguishable from commercial goodwill’)

Intro to goodwill.

Goodwill is the attractive force that brings in custom: IRC v Muller (the benefit and advantage of the good name, reputation and connection of a business).

Can have ‘extended goodwill’ or ‘shared’ goodwill for a group of people: Bollinger
- Eg champagne growers – collectively own the goodwill.

Intro to indicia

Any marks, names or devices of any kind that are used as ciphers to teach the public how to get the trader’s goods amounts to indicia of goodwill: Powell

Note: it is the indicia by which an activity is known rather than the activity itself that gives rise to goodwill: BBC v Talksport

Include:

Names (made up, generic or personal)
1. Note: Passing off requires secondary meaning for generic names: Reddaway v Banham. The first user of a descriptive name will have to prove reputation to succeed: McCain International v Country Fair
  1. Failed argument in Stringfellow – no secondary reputation of ‘stringfellow’ as being about pole dancing clubs.
Trade-mark
Shape and look (‘get-up’) (shape may indicate source: Edge v Nicholls; Jif Lemons)
1. Eg – goodwill existed in packaging of lemon juice in lemon shaped container: Jif
Colour (see Cadbury v Darrell Lea )
1. However note – Cadbury didn’t own colour purple: Cadbury
2. Woolworths didn’t own colour green: Woolworths v BP
Trade dress or styles
1. Eg – Alexandra – maccas stand alone restaurants.
Advertising/Descriptive material or themes: Cadbury Schweppes v Pub Squash.
1. Eg advertising themes can sustain reputation – solo had yellow can with manly imagery – pub squash issued similar product. Held no secondary reputation over yellow cans held by Solo: Cabury Schweppes v Pub
2. eg slogans or visual images which radio, tv or newspaper ad campaigns can lead the market to associate with a P’s product, provided that such descriptive material has become part of the goodwill of the product: Cadbury
3. Test is whether the product has derived from the advertising a distinctive character which the market recognizes: Cadbury
Characters
1. Eg ‘Dundee’ – ‘Koala Dundee’ small shops selling souenoirs – misrepresentation that the reputation of Hogan had associated with them: Hogan v Koala Dundee (now the law of aust that creator of sufficiently famous character having certain visual or other traits may prevent others using his characters to sell their goods – even where the inventor has never carried on any other business)
2. Scene from a movie enacted in Pacific Dunlop v Hogan created false message that Hogan recommended a type of shoes. Signficant section of public viewing advertisement would have been misled into believing there was a commercial agreement with Hogan.
Themes

After this – remember to consider misrepresentation

Held that consumers are sophisticated enough (at least in relevant market of assam teapots) to know that there are copyists and to look for distinctive brands: Bodum. Here the products were distinguished. Nor reference to other name or logo. Knowledgeable consumer familiar with bodum would expect to see the bodum name/logo on products, as that was how the brand distinguished itself.
May be that although there is indicia of goodwill (eg a distinctive shoe design has become strongly associated in the market with doc marten product), unable to show misrepresentation if other manufacturers adopt similar design for own cheaper boots with distinguishing labels: Dr Martens

#8562 - Passing Off Action - Foundations of Intellectual Property

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