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

History of passing off and trade mark protection

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 19^th 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.

Fraud still has a continuing role to play in the action of passing off in Australian law

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Laws3248 Summary Notes Trade Marks Notes

Updated Laws3248 Summary Notes Trade Marks Notes

Intellectual Property 2 (Trade Marks)

Table of Contents

Class 1 – Introduction to Trade Marks and the Protection of Trade Reputation; Passing Off and Consumer Protection Legislation (Part 1)

Casebook Readings

Chapter 14 – Trade Marks, Passing off and Protecting Trade Reputation: History, Justifications and Context

Introduction

History of passing off and trade mark protection

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Laws3248 Summary Notes Trade Marks

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