LAWS3248: Intellectual Property 2 – Trademarks
Summary Notes
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Passing Off and Consumer Protection Legislation 8
Tests for passing off and contravention of consumer protection legislation 8
Class 2 – Passing Off and Consumer Protection Legislation (Part 2) 16
Misrepresentation or misleading or deceptive conduct 19
The relevant standard: Is mere confusion sufficient 20
Types of misrepresentation: Origin 21
Misrepresentations involving descriptive words 21
Misrepresentations involving copying descriptive get-up 21
Misrepresentations involving copying product appearance 22
Types of misrepresentation: Quality 23
Types of misrepresentation: Inverse Passing off 24
Types of misrepresentation: Sponsorship, endorsement or affiliation 25
Application for registration 33
Registration, renewal and loss of rights 35
Examination, opposition and cancellation grounds 35
Assessing inherent adaptation to distinguish: Particular examples 38
Conflict with geographical indication 61
Registered Trade Marks: Infringement, Defences, (Loss of Rights and Exploitation) 61
Class 6 – Defences to Infringement; Loss of Rights and Exploitation 71
Use of a person’s place of business 71
Consent of the registered owner 72
There are two main legal mechanisms by which the law provides legal protection to traders in respect of the marks and other indicia they use to distinguish their G&S from other traders
The first is the tort of passing off, as supplemented by provisions of consumer protection legislation – these prohibit parties from engaging in misrepresentations or misleading and deceptive conduct by adopting other traders signs/indicia
The second is the system of registered trade mark protection under the Trade Marks Act 1995
Origins of Passing off
The tort of passing off has its origins in the British common law action for deceit – courts providing a remedy for traders whose name or symbol was adopted by another with the intention of inducing customers to believe its goods were in fact those of the first
The rationale behind this being a ‘fraud on the public’
This came to be called the tort of passing off, underpinned by the fundamental element of fraudulent misrepresentation (Perry v Truefitt)
By the early 19th century the Courts of Chancery also heard similar actions and were able to grant injunctions, but only where a legal right existed. The basis of this action was fraudulent conduct until in Millington v Fox the LC granted an injunction without fraud. Over time the Chancery courts came to articulate the view that equity’ intervention in cases of this type were based on the plaintiff’s property rights in the mark itself
Modern form of the tort of passing off
The idea that a mark constituted a form of legal property was important historically. But in the context of passing off it had very little impact because the CL courts had a different idea of what was protected by the tort of passing off and it was only at that time did the modern action take its form.
Erven Warnink BV v J Townsend & Sons (Hull) Ltd [1979] AC 731 Lord Diplock noted the judgment of Reddaway v Banham which denied that an action for passing off protected a proprietary right in the mark and that this expanded the actions to misrepresentations as to thinks like trade names and other indicia – this case was a classic case of misrepresenting one’s own goods as the goods of someone else. It was only in AG Spalding & Bros v AW Gamage that Lord Parker identified the right which is protected by an action of passing off is the ‘property in the business or goodwill likely to be injured by the misrepresentation’. Goodwill being defined as ‘the benefit and advantage of the good name, reputation and connection of a business. It is the attractive force which brings in custom’ The goodwill of a manufacturer’s business could be injured by someone else who sells goods who are correctly described as being made by that manufacturer but being of an inferior class of quality – in AG Spalding this was held to be actionable and the extension to the nature of the misrepresentation which gives rise to a right of action in passing off which this involves was regarded by Lord Parker as a natural corollary of recognizing that what the law protects by a passing off action is a trader’s property in their business/goodwill. The significance of this was that passing off lay in the recognition that misrepresenting someone’s goods as someone else’s was not a separate genus of wrong but a particular species of wrong included in a wider genus. |
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Fraud still has a continuing role to play in the action of passing off in Australian law
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