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Law Notes Foundations of Intellectual Property Notes

Passing Off Action Notes

Updated Passing Off Action Notes

Foundations of Intellectual Property Notes

Foundations of Intellectual Property

Approximately 187 pages

These notes set out the relevant legal principles, and provide succinct fact summaries to demonstrate how those legal principles have been applied in various cases.

At the beginning of each document on each topic, there is a table of contents (hyperlinked so you can navigate easily through the document), and also an 'exam checklist', which you can use during revisions or exams to remind yourself of the key issues you have to address.

You can use these to quickly learn a topic before class (...

The following is a more accessible plain text extract of the PDF sample above, taken from our Foundations of Intellectual Property Notes. Due to the challenges of extracting text from PDFs, it will have odd formatting:

5a. Passing off

Table of Contents

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

(c) Amount to goodwill – consider the indicia of reputation 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

(c) Significant numbers of the group to whom misrepresentation directed likely deceived? Domain Names Case 12

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

(c) Loss of licensing revenues to marks: Mirage Studios 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

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

  • 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)

Cheatsheet from AG framework:

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

  1. Definition: is one trader representing its goods/services as those of another?

  2. 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.

Passing off notes by eb

Overview of passing off

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.

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

Reputation?

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

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’)

Amount to goodwill – consider the indicia of reputation

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).

  • ...

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