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Law Notes > Intellectual Property 2 (Trade Marks) Notes

Laws3248 Summary Notes Trade Marks Notes

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LAWS3248: Intellectual Property 2 – Trademarks

Summary Notes


Table of Contents

Class 1 – Introduction to Trade Marks and the Protection of Trade Reputation; Passing Off and Consumer Protection Legislation (Part 1) 4

Casebook Readings 4

Chapter 14 – Trade Marks, Passing off and Protecting Trade Reputation: History, Justifications and Context 4

Current Context 7

Passing Off and Consumer Protection Legislation 8

Tests for passing off and contravention of consumer protection legislation 8

Reputation 10

Extra Cases 14

Class 2 – Passing Off and Consumer Protection Legislation (Part 2) 16

Location of reputation 16

Spillover reputation 16

Temporal considerations 17

Ownership of goodwill 18

Misrepresentation or misleading or deceptive conduct 19

The relevant standard: Is mere confusion sufficient 20

Other Preliminary Issues 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

Damage 28

Types of Damage 28

Damages and Remedies 29

Extra Cases 30

Class 3 and 4 – Introduction to Registered Trade Mark Law; Distinctiveness and other Absolute Grounds of Rejection 31

Definitions 31

Procedural Issues 33

Application for registration 33

Examination 33

Acceptance and opposition 34

Registration, renewal and loss of rights 35

Examination, opposition and cancellation grounds 35

Absolute Grounds 36

Distinctiveness 36

Assessing inherent adaptation to distinguish: Particular examples 38

Other Absolute Grounds 46

Class 5 – Conflicts with earlier registered marks or applications for registration; Infringement and Defences 51

Relative grounds 51

Section 44 51

Other Relative Grounds 56

Ownership 58

Conflict with geographical indication 61

Registered Trade Marks: Infringement, Defences, (Loss of Rights and Exploitation) 61

Infringement 61

Class 6 – Defences to Infringement; Loss of Rights and Exploitation 71

Defences 71

Use of a person’s place of business 71

Consent of the registered owner 72

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


  • 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 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.

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

Origins of registered trade mark law

  • At the same time that Chancery courts viewed that the action of passing off protected a form of property in the mark itself, the UK parliament was taking steps to provide further protection for trade marks

    • The Merchandise Marks Act did so and defined ‘trade mark’ broadly

    • This was followed by pressure to adopt a system of registered trade marks as one had exist in France and eventually this occurred

  • Even though analogies were drawn to property rights, trade marks didn’t have all the characteristics of forms of property

    • The Act contained an express restriction on TMs being assigned separately from the goodwill of the business in which it was used (as did the CL)

    • Explicit recognition of rights in the mark itself as a form of property meant that the action for trade mark infringement differed from passing off since it didn’t require a plaintiff to demonstrate any trading goodwill or reputation – proprietorship in the TM was enough

    • Also a registered TM was infringed just by its use irt specified goods – one didn’t have to show that the defendant’s use conveyed a misrepresentation. However, rights were interpreted strictly (e.g. Hargreaves v Freeman – RTM for tobacco not enough to cover the mark on cigars)

  • The AU Act which followed was slightly broader, allowed more marks to be registered and made it clear that it was an infringement so long as the used mark was ‘substantially identical with the TM or so nearly resembling it as to be likely to decieve’

  • Following some new Acts in the UK and AU, the immediate predecessor of the current regime was in force and TM law in AU developed such that:

    • Both a mark and a trade mark were defined

    • The register was divided into different parts to categorize marks capable of becoming distinctive

    • Applicants could register their marks in respect of services as well as goods

    • Registration only lasted seven years, but could be renewed

    • Provisions were in place to allow a registered TM to be removed on the basis of non-use; and

    • The exploitation of registered TMs was more straightforward as marks could be assigned separately from the goodwill of the underlying business and could also be licensed

  • The CB writers note:

    • That though the TM system was not a statutory re-enactment of ‘passing off’ – they share a close relationship. Initially the registration system made it easier to enforce rights. The tort of passing off expanded to provide broader protection too and these fed into further expansion of TM law and continued to loop as such

    • Further, care has to be taken when considering claims that ‘preventing consumer confusion’ is what underpins the action of passing off – the true essence of it is that the defendant engaged in conduct misleading consumers

      • The HCA in Compomar v Nike recognized that AU RTM statutes have always tolerated a bit of consumer confusion and are best seen as involving a balance between conflicting interests in regulating the conduct of competing traders as well as safeguarding consumers of goods and services

Justifications for protecting trade marks and indicia

These are different to things like patents which are justified as promoting creativity etc.

TMs and indicia as sources of information

  • The principal justification for legal protection of TMs and trade indicia is that they serve to communicate valuable information allowing consumers to make informed choices about purchases. They operate as an indication of origin.

  • They also fulfil other functions dependant on their origin function. One is a product differentiation function – consumers can purchase products of similar quality by reference to their trademarks, reducing consumer search costs and increasing economic efficiency of markets

  • In SA CNL-SUCAL NV v HAG GF AG the Advocate General said that TMs reward the manufacturer who consistently produces high quality goods and thus stimulates economic progress. Without them there would be no incentive for manufacturers to develop new products or maintain existing ones. Thus they serve as an indicia or guarantee of quality and if the manufacturer does not live up to it, they do so at their own risk

Preventing misrepresentation as a standalone justification

  • A different justification is based on the idea that misappropriation of a brand owner’s labour, investment and reputation should be prevented – this is like a natural right’s argument

    • This can also explain traditional contours of passing off/registered TM law – traders shouldn’t be allowed to take advantage of another trader’s goodwill by using their TM such that traders ought to be granted rights to prevent the use of their marks by rivals in relation to the same or similar goods

    • The justification may also be said to extend beyond this to encompass situations where the other trade can be said to be taking advantage of the TM’s reputation, even in the absence of consumer confusion

  • This argument is often made on the latter basis that the old justifications for TMs don’t represent market reality. Instead TMs now serve an advertising function in that consumers don’t care about quality but see symbols that are desirable commodities in their own right

    • This is related to the idea of ‘brand value’ and ‘brand image’

    • IT is argued that in light of this advertising function, owners should have legal protection against conduct that dilutes the value of their marks


  • In jurisdictions like the US and UK some legal protection is available against the dilution of TMs but it tends to be limited to particularly famous marks or those with a lot of reputation

  • In Ty, Inc v Perryman Posner J identified three sources of dilution in the context of his example of the jewellery store ‘Tiffany’ and a restaurant adopting that same name

    • The concern that consumer search costs rise if TMs are associate with a variety of unrelated products. Where consumers see the same name they could think of both the restaurant and jewellery store and thus the efficacy of the name as an identifier will be diminished (increased imagination costsblurring)

    • If the restaurant happens to be a striptease joint then even though consumers won’t think of it as being commonly owned, the tendency of the human mind to proceed by association will tarnish the image of the jewellery store

    • There is also a concern that someone could take a free ride on the investment of the TM owner – even if the restaurant happened to be in a foreign country and those who shopped there would never buy anything at the jewellery store, the efficacy of the trademark as an identifier will not be impaired.

      • But if the appropriation of Tiffany’s aura is nevertheless forbidden by an expansive concept of dilution, the benefits of the jewellery store’s investment in creating a famous name will be ‘internalised – Tiffany will realize the full benefits of the investment rather than sharing it with others and thus the amount of investing in creating a prestigious name will rise

  • The CB writers note that the problem with extending TM protection to this extent is that it isn’t clear why advertising expenditure in creation of brand-value should necessarily be rewarded with stronger legal rights given that brand value is more to do with social responses

  • This debate is important because in AU there are no specific anti-dilution laws in place

Justifications for trade mark registration

  • The primary justification is that the register acts as a valuable source of public information as to the signs that are protected in a given commercial sphere and matters such as initial ownership and subsequent assignment of marks

  • But the downside is that if registration isn’t required, the passing off regime operates side-by-side which means traders who consult the register won’t get an accurate picture of what has been registered

Current Context

Sources of laws protecting business reputation

  • The tort of passing off is one such source but the most important statutory supplement is that in the Competition and Consumer Act s 18 which provides that a person shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive. This was design to broadly catch conduct in the nature of passing off

  • Remedies for contravention are found in s18, including interim or final injunctions (ss 232, 234) and damages (s 236) or other orders as the court sees fit (s 238). Other provisions afford more specific protections [574]

Sources of trade mark law

  • A number of international agreements are important in this field including

    • The Paris Convention on the Protection of Industrial Property – which requires equal treatment for boeth foreign and domestic nationals

    • TRIPS which imposes obligations relating to the definition of trademarks, the scope of rights regisetered and the requirements to use

  • Most importantly there is what is now the Trade Marks Act 1995 which is distinguished form the current UK Trade Marks Act 1994 which was based of the EU TM Directive

  • Since the 1995 a number of intl. developments have occurred requiring changes to AU law, the most important of which was becoming a party to the Protocol Relating to the Madrid Agreement which streamlines procedures for obtaining registration – other such ones exist [575]

  • There have also been domestic reviews and inquiries into the operation of the Act which have led to legislative amendments

Other dimensions

  • Other forms of regulation include

    • Under TRIPS, AU has additional obligations to protect ‘Geographical Indications’ – e.g. ‘Proscuitto di Parma’

    • There is special legislation relating to the use of specific insignia (Olympic Insignia Protection Act) etc.

    • The Uniform Domain Name DR Policy governs licensees of domain names’ conduct in some limited respects [576]

  • The CB distinguishes between business names and trademarks – the former not providing any forms of property or giving any legal rights

Passing Off and Consumer Protection Legislation

  • Passing off is designed to safeguard a trader’s goodwill or reputation while consumer protection legislation is ostensibly designed as a consumer protection measure

    • Either way both play nearly identical roles in the context of this chapter – providing traders with a certain degree of protection against other traders using TMs or similar indicia in a manner that would mislead consumers

Tests for passing off and contravention of consumer protection legislation

  • Though the test is capable of precise definition, two tests are prominent

Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] AC 731

Lord Diplock set out the five elements regarded as essential for a valid action of passing off:

  1. A misrepresentation

  2. Made by a trader in the course of trade

  3. To prospective customers of his ultimate consumers of G&S supplied by him

  4. Which is calculated to injure the business or goodwill of another trader in the sense that this is an RF consequence

  5. Which causes actual damage to a business or goodwill of the trader by whom the action is brought, or in a quia timet action will probably do so

Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491

Lord Oliver set out the test noting that passing off is essentially the idea that “no man may pass off his goods as those of another” but boiled this down to three components:

  1. He must establish a goodwill or reputation attached to the G&S which he supplies in the mind of the purchasing public by association with the identifying get up (whether consisting of just a brand name or trade description) under which his particular G&S are offered to the public, such that the get-up is recognized by the public as distinctive specifically of the plaintiff’s G&S

  2. He must demonstrate a misrepresentation by the defendant to the public leading or likely to lead the public (intentional or not) to believe that G&S offered by him are the goods or services of the plaintiff

    1. Whether the public is aware of the plaintiff’s identity as the manufacturer of the G&S is immaterial so long as they are identified with a particular source which is in fact the plaintiff

  3. He must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as those offered by the plaintiff

  • The latter test is the more preferred but both draw on what is called the classical trinity of passing off (goodwill or reputation, misrepresentation and damage or likelihood thereof)

  • The CB writers note 4 important propositions here:

    • As Gummow J said in ConAgra, despite the utility of these tests the tort has sufficient nooks and crannies to make it difficult to formulate any short form definition – sometimes courts have been prepared to broaden the scope of these particular elements

    • The interrelationship between the sections is important. Reputation isn’t a concept that can be assessed in isolation from the other elements: assessing whether the plaintiff has a sufficient reputation isn’t an all or nothing question

      • Instead, the extent of the plaintiff’s reputation will significantly impact the question of whether certain conduct is misleading or deceptive or involves a misrepresentation that causes damages

    • Recognizing the interconnected nature of the elements of the passing off action explains why passing off and actions for contravening CPL are somewhat coterminous

      • S 18 of the ACL may seem to suggest that the plaintiff only needs to establish one element: misleading or deceptive conduct. But numerous cases have recognized that conducting involving the use of a TM will only constitute misleading or deceptive conduct if that trader has a protectable reputation attaching to the sign or indicia

      • Mars AU v Sweet Rewards it was held, in this vein, that it is necessary to identify the features of the said mark in which a reputation is said to inhere for it is the existence of the reputation which the action of passing off protects. This is the same under s 18

      • Furthermore even though damages or a likelihood of them isn’t a formal requirement of ACL s 18 when seeking to get an injunction or damages it is likely that one will need to show actual or likely damage to reputation

    • Despite the breadth of passing off and the CPL, neither extends so far as to catch all types of copying names and images which are said to be ‘unfair’. Furthermore AU courts have emphatically rejected the possibility of a doctrine of unfair competition as against what responsible Parliaments have determined to be the appropriate balance between competing claims and polices


  • The first element of the trinity is that of goodwill or reputation

  • There is no fixed minimum level of reputation the needs to be established – much depends on the relationship between all the other elements

    • That is, whether a plaintiff has sufficient reputation turns on factors like the nature of the sign or other indicia to which the reputation purportedly attaches, the geographical area in which the plaintiff is claiming to enjoy the reputation, the length of time the trader has been trading and the intensity of that trade

To what does the reputation attach?

  • The tort of passing off is concerned with the reputation attached to the G&S which the trader supplies in the mind of the purchasing public by association with the identifying “get up” of those goods and services

    • This can take a variety of forms – most commonly it will be a ‘trade mark’ (rand name, logo etc.) but this area of the law isn’t about protecting TMs so much as the plaintiff’s reputation as manifested in the get-up

    • Passing off can also be used where a defendant has adopted indicia like images, characters etc.

Reputation in descriptive words

Reddaway v Banham [1896] AC 199

Facts: R manufactured belting made from camel hair sold as ‘Camel Hair Belting’. Around 10 years later B started to market a similar product under the same name. At trial the jury found that B engaged in passing off and an injunction was granted restraining their use of the word ‘Camel Hair’ in such a way as to deceive purchasers into the belief they were r purchasing R’s belting.

Lord Herschell:

  • Though belts had been made from camel hair yarn all over the world there was ample evidence to justify that the purchasers of such good hair associated the words ‘camel hair’ not to belting of a particular material but those by a particular manufacturer

  • The name of a person or words forming common stock of language can become so far associated with the goods of a particular maker that it is capable of proof that the use of them by themselves without explanation or qualification by another manufacturer would deceive a purchaser into the belief that he was getting the goods of A when he was really getting those of B

  • But mere proof of the use of the name wouldn’t be enough. A plaintiff would have to prove that the defendant was using it under such circumstances or in such a manner as to put off his goods as the goods of the plaintiff. If he could, then an injunction would be granted

  • Here the CA proceeded on the premise that where a manufacturer uses a descriptive word as a trademark they are never entitled to relief – this isn’t supported by authority or principle

Lord Halsbury reached the same conclusion noting that prima facie it would be difficult to acquiesce in the contention that a person was making their goods pass as the goods of somebody else just by describing the subject of sale. But the circumstances of this case made this prima facie impression wrong – clearly one man’s goods were being sold as those of another

Hornsby Building Information Centre v Sydney Building Information Centre (1978) 140 CLR 216

Facts: The SBIC had traded for 30 years. It obtained from the Industrial Court an injunction under s 80 of the TPA or restrain the HBIC from trading under this name for a contravention of s 52.

Stephen J noted as a preliminary point that where, as in s 52, the focus is on misleading others rather than injury to a competitor, it becomes of particular importance to identify the respect in which there is said to be any misleading or deception. He assumed for the purposes of his honour’s judgment that persons had indeed been misled that the HBIC was a branch of the SBIC and noted further that the issue here concerned the use of 3 descriptive words prefixed by a locality.

Here it was the case that the use of the words were so associated with the SBIC to the extent that signage merely said ‘Building Centre’ in the premises. His honour noted the tension which flowed from descriptive trading names – because it is descriptive it is equally applicable to all like businesses and isn’t distinctive of any particular business.

  • In an action for passing off where it is the wrongful appropriation of reputation, a plaintiff that uses descriptive words in its trade name will find that a slight variation in the competitor’s trade name will render them immune from action

    • It is to be accepted that confusion will occur in the public mind – to do otherwise gives one who appropriates to himself descriptive words an unfair monopoly on those words and could deter people from pursuing occupations which those words describe

  • If this is so for passing off, s 52(1) which is only concerned with the interests of third parties, it will apply a fortiori

    • Given that a name is no more than descriptive of a particular type of business – its use by others who carry on that same business doesn’t mislead or deceive as to the nature of the business

    • Here both the HBIC and SBIC are BICs and no one is deceived as to the nature of the service. Any deception would arise only from the fact that SBIC chose descriptive words as a title and were the only people in Sydney to do so and thus people associated a business activity with them.

    • Evidence of confusion in the minds of members of the public isn’t evidence that the use of HBIC’s name is itself misleading or deceptive – but only evidence of its intrusion into the field originally occupied exclusively by the SBIC which caused a degree of confusion

His honour noted that there was evidence that the activities of both were similar but said that this wasn’t conclusive of any wrongdoing. He analogized it to an art gallery – if a similar situation occurred where one attached a regional prefix for a significant amount of time and a new entrant appeared in the market would neither mislead or deceive

  • Although passing off wasn’t an issue in Hornsby the approach is entirely consistent with a passing off action – e.g. the use of the word ‘Kettle’ was distinctive of the brand of kettle-cooked chips (Apand v Kettle Chip Co)

Reputation in packaging and shape

Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491

Facts: R&C’s lemon shaped contained had the brand-name Jif embossed on the side and bore a green-paper label featuring the same word. B’s three types of container each bore a yellow paper label featuring the brand name ‘ReaLemon’ and marketed in the same style of container. The CA with the TJ in ordering B be restrained from selling its product – this was an appeal to the HOL

Lord Oliver noted the fallacy in proceeding on the proposition that you ‘can’t claim a monopoly in the sale of a plastic lemon’ – here the deception wasn’t in this but in containers so fashioned as to suggest that the juice inside ir emanated from the source with which those configurations were associated in the public mind.

Thus the only question is whether the respondents, having required a public reputation for Jif juice, by selling for many years in containers of a particular shape and design that has become associated where produce, can legitimately complain of the sale by the appellants of similar produce in containers of similar, though not identical, size, shape and colouring.

  • His honour thus rejected the idea that the plastic lemon was the object itself rather than the ‘get-up’ under which the produce is sold.

    • As to the Q: But neither does one merely look at the difference in labels and say that the labels couldn’t be confused – the question is whether what they are doing is a misrepresentation that their juice is Jif juice and whether this results from the similarity of their get-up to the whole of the respondents get-up

    • As to the Q: Once it is established as a matter of fact that what they’re doing constitutes a misrepresentation which deceives the public into an erroneous believe – this is enough.

  • It was also accepted that one cannot get protection simply because another uses the same/similar terms as descriptive of their own goods and have been the only ones to employ that description

The disagreement arose from the argument that what the respondents are asking the court to protect is just the se of a descriptive term which is embodied in a plastic lemon instead of expressed verbally:

  • Here it was said there was nothing special about using a plastic lemon container – it was done all over the UK and US. But if it becomes associated in the minds of the purchasing public with Jif juice, then the confusion arises only because of a practical monopoly and a belief/assumption that all emanate from the same source

  • The difficulty with this is that this type of assumption is the basis of all passing off actions

  • But to succeed it isn’t enough that they have had a practical monopoly which lead members of the public to believe all goods emanate from him. He must demonstrate that it has become so closely associated with his goods as to acquire the secondary meaning of not simply goods of that description, but specifically of goods which he and he alone is the source

  • The TJ found as a matter of fact that the natural size squeeze pack form was so closely associated with Jif lemon juice that introduction of the appellant’s juice in any of the proposed get-ups would be bound to result in many purchasing the juice believing it contained Jif Juice

  • This indicated that the plastic shaped lemon container merely had secondary significance – it indicates that it wasn’t just lemon juice, but Jif Lemon Juice

Lord Jauncey reached the same conclusion but also noted that it wasn’t legitimate to equate the use of a plastic lemon of natural shape to the word ‘lemon’ in its ordinary use and couldn’t see why a trader couldn’t get protection for such an ingenious idea.

Nutrientwater Pty Ltd v Baco Pty Ltd [2010] FCA 2

Facts: It was established that the NW product range copied elements of the get-up of vitaminwater flavoured water (at the time not available in AU). In Feb 2008 they entered the market and other parties also did so. In May 2009 the respondent entered the market and started selling flavoured water in similar bottles.

Kenny J began by noting that NW had to show that it had the requisite reputation in the get-up that Baco appropriated. His honour noted that the difficulty of establishing reputation in a get-up alone:

  • Essentially it requires the establishment that so much of the totality of the get-up was adopted that the overall impression of the other brand is adopted.

  • This takes a strong case as consumers generally don’t associate a get-up with a person in some markets

  • The requisite reputation will be more readily found where the get-up is unique or striking rather than descriptive, mundane, merely function or in common use

(Natural Waters)

  • Here NW didn’t establish that its reputation lay in the features it sought to protect, even though its product range had a reputation, as opposed to in its distinctive name/logo, overall packaging or get-up

  • NW relied on a combination of features here which were said to be distinctive – but most of these were shared with other competitors like viatminwater and Smart Water

    • Most of the brands had a ‘rainbow’ set of colours when arranged with similar variants in brand ranges. All were in clear plastic bottles with large wrap-around labours and horizontal banding with white colours.

  • Thus NW hadn’t established such a degree of distinctiveness in the colour of their product range or any other feature, alone or together, to justify that it had discrete reputation

  • Furthermore they copied a lot of the features of vitaminwater which is now a leader in terms of sales valume

  • In the circumstances the sales and market evidence can’t justify that Baco appropriated NW’s features as opposed to competitors in the market generally. Further, there is no room for this kind of case where the get-up which it relies on substantially adopted the gestalt/look-and-feel of the US vitaminwater product

  • [592] The CB writers note a number of other categories of cases

    • Cases involving shapre or appearance – e.g. a piece of furniture (Parkdale), the appearance of a show (Dr Martens v Riversi) or the shape of a rotary shaver (Koninklijke Phlips v Remington) make it more difficult to demonstrate a secondary meaning in such features and to show that one has engaged in misrepresentation/MODC by copying those features

    • Reputation can also attach to image of famous personalities – e.g. Kieren Perkins (Talmax v Telstra) or famous ballroom dancers (Henderson v Radio Corp). Passing off and CPL can also be used to prevent unauthorized marketing of good associated with film characters or TV show advertisements (Hogan v Koala Dundee)

    • It can also attach to something as broad as advertising concepts but this is difficult to show

      • An example is Cadbury Schweppes v Pub Squash – in the 70s Solo was marketed by Cadbury as a manly drink and associated with manly activities and a series of advertisements continued through to the mid-70s. In 1975 Pub Squash did similar ads based on same concepts

        • Held (Lord Scarman): That passing off is wide enough to encompass advertisement campaigns – the only test is whether the product has derived, from the advertising, a distinctive character which the market recognizes

          • Here Cadbury didn’t establish exclusive reputation in its advertising themes and thus failed

Extra Cases

Bodum v DKSH Australia Pty Limited [2011] FCAFC 98

Facts: Bodum and its companies were the owners and licensor of a registered TMs of the name “Bodum”. The respondent AU company was a subsidiary of a Swiss company that imports home-ware including the coffee plunger which was the subject of this suit. Bodum manufactured and sold a coffee plunger that was extensively advertised through a number of channels and had a significant reputation. The packaging for this product prominently depicts a photograph of the good and gives prominence to the design features of the plunger within – rendering it transparent to consumers. Bodum contended that by reason of these matters it acquired a substantial and valuable reputation in the features and distinctive shape of the plunger with the result that sale of plungers which embody those features is likely to signify to AU consumers that they were Bodum coffee plungers.

Greenwood J

Reputation and advertising material

  • There can be no doubt as a matter of law a trader can acquire a reputation for goods or the get-up for goods, or put another way, the design or get-up of good. His honour noted

    • Edge v Nicholls where the plaintiff marketed laundry blues with the particular feature that it was “put up in a porous bag, the neck of which was tied round a small stick with a knob at each end” (called the Dolly Blue. The manner in which these goods were ‘done up’ became ‘associated in the minds of purchasers with the plaintiff’s goods and the evidence demonstrated that the public distinguished the plaintiff’s goods from all others

    • Reckitt v Coleman

  • There is no point of departure in a case based on the features of a product, as a matter of principle, from the general proposition that “no man may pass off his goods as that of another”. In the end the question of such secondary reputation is one of fact and impression

    • His honour noted that in this case it wasn’t, as the TJ held, that the coffee plunger had a reputation solely because of the Brand Bodum.

    • Here, the level of association attained between the plunger and the brand was simply as a result of the success of their advertising campaign

    • But the secondary reputation isn’t lost by association of the images with the manufacturer’s TMs – those consumers retain a recognition of the TM and the distinctive features of the product are likely to think that products exhibiting those features are Bodum unless the rival product tells the consumer otherwise

      • Some consumers might not recall the Bodum name but instead seek out ‘that distinctive coffee plunger’ and thus treat a coffee plunger exhibiting those features as being a Bodum

  • Here the independent and secondary reputation of the goods was clearly shown by publications in the SMH and the Myer catalogue of the Bodum coffee plunger by itself – the presumption being made that consumers would recognize it

    • His honour was thus satisfied that a very significant secondary reputation in the features was established

    • The case was distinguishable from Mars Australia (The Maltesers Case) where it was held that by so heavily promoting the distinctive product in conjunction with its TM, in the absence of that TM no potential purchaser would be likely to be misled

      • In that case the finding depended on the Maltesers get-up, the highly stylized and dominant word Maltesers as the principal component of it etc.

      • Further that product was a boxed product where confectionary couldn’t be examined by a potential buyer independent of its packaging

Was the conduct of GKSH MOD or likely to MOD consumers and does the impugned conduct pass off DKSH’s rival product in the way contended

  • His honour considered a number of factors in answering this question

    • Bodum, when DKSH was released, enjoyed substantial reputation with its features becoming distinctive of the product of its maker over 30 years of garnering that reputation.

    • Sales of the product dwarfed that of DKSH

    • The overall visual difference between the two product was small and had a marginal effect on the overall appearance – they were “so similar” that it was unlikely one could conceive the DKSH product without reference to the other

      • The one difference was that the top horizontal band on the DKSH ‘Euroline’ plunger exhibits cavities within the band and exhibits one has a round knob of the same size as that on the Bodum product. The Bodum product also had an additional ‘safety skirt’ small differences

Having regard to all the factors his honour found it difficult to accept that DKSH distinguished its product as found by the TJ

  • Bodum’s packaging of a white box displaying a large impact of a coffee plunger marked ‘Chambord’ with the Bodum TM

    • The rival is also two-thirds white. It has a large image of the rival product that is just about exactly the same as the Bodum one. It has the trade name ‘Euro Line TM’ at the base of the box (which was not distinctive and was likely to be regarded as an abbreviated description of the product being within a line of European products)

  • Factually the product was often removed from the box and displayed outside

    • The DKSH product had no brand marking on the product itself and just had an instruction leaflet and a sticker marked ‘Euroline’ which was not easily detachable and may or may not represent a method of differentiating it which would guarantee a representation to a consumer that this was different to Bodum’s product

  • The adoption on the box of a non-distinctive and descriptive trade mark Euroline for a rival product that for all practical purposes embodies all the features of the product exhibiting the substantial reputation of the Bodum one isn’t sufficient to distinguish the rival product from the distinctive product sought to be copied

    • Especially in the context of products commonly being advertised outside their boxes

    • It would have been easy for DKSH to mark its name prominently on the box or on the product itself

  • Thus an inference is poen that DKSH’s get up was such as to lead consumers to believe that when they engaged with it they were actually engaging with Bodum’s product even if they saw the word ‘Euroline’ on the box

    • If they didn’t see the box and were drawn to the plunger by the distinctive features of the Bodum product they may well pick it up and examine it and not be able to find out that they weren’t looking at a Bodum product

    • The association between the distinctive features of the Bodum product and the name Bodum is not material even though a savvy consumer may be able to pick up the product and look for the Bodum trade mark for a reasonable and ordinary member of the class of consumers seeking to buy a coffee machine who was drawn to it by reason of the copying of the distinctive features will be unable to tell it wasn’t a Bodum

    • As a matter of impression it is entirely rational to conclude that such a member of the class is very likely to think that the largely indistinguishable product embodying those features is the Bodum product

Class 2 – Passing Off and Consumer Protection Legislation (Part 2)

Location of reputation

  • In actions for passing off and contraventions of the CPL the plaintiff has to establish a reputation in the area in which the defendant is trading

    • For trade within Australia this doesn’t require the plaintiff have a trading presence in the same suburb, town or even state in which the defendant is trading – it is enough that consumers who are encountering the defendant’s operation are aware of their business

      • Generally where the defendant trades in a local area and the plaintiff enjoys significant trade in other parts of AU the existence of a reputation will be easy to establish – e.g. BM Auto Sales v Budget Rent A Car where Budget, a well-known car hire company, was able to demonstrate it had a reputation in the term Budget in the NT through the presence of travellers there who were aware of their business elsewhere in AU

Spillover reputation

  • A difficult Q is whether it is sufficient for a foreign trader to just have a reputation in AU or whether it is necessary for them to have an AU trading presence (that is, whether spillover reputation is sufficient to found a passing off action)

ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302

Facts: ConAgra was incorporated in the US and sold frozen foods under a number of brand names, including Healthy Choice – it having a substantial reputation in this name in the US but having never traded in AU. McCain applied for the TMR for the same name, ConAgra sued in passing off for contravention of s 52 of the TPA.

Lockhart J (342-346) noted that the hardline UK cases were out of line with the reality of international business, which is that contemporary consumers are not usually concerned about the location of the premises of a company or the site of its warehouse or manufacturing plant where the goods are produced, but they are concerned with the maintenance of a high level of quality represented by internationally known and famous goods.

  • Thus the real question is whether the owner of the goods has established a sufficient reputation with respect to his goods within the particular country in order to acquire a sufficient level of consumer knowledge of the product and attraction for it to provide custom which, if lost, would be likely to result in damage to him this is a question of fact

    • It is still necessary for the plaintiff to establish that (1) their goods have the requisite reputation in the particular jurisdiction, (2) that there is a likelihood of deception and a (3) likelihood of damage

      • But reputation can be established by a variety of means – TV/radio advertisements, magazines, newspapers

    • Thus it is not necessary in Australia that a plaintiff, to have an action in passing-off, have a place of business or business presence in AU, or is it necessary that his goods are sold here

    • It is enough if their goods have a reputation in this country amongst persons (residents or otherwise) of a sufficient degree to establish a likelihood of deception amongst consumers and dame to his reputation

On the question of extent

  • The plaintiff must prove that there are within the jurisdiction in which the defendant is carrying on business a substantial number of persons who are aware of the plainitff’s product (residents or not)

    • This flows from the fact that in a practical and business sense, a sufficient reputation requires something more than a reputation among a small group of persons – but the size and extent of the class may vary according to the circumstances of the case

Gummow J (372) opined that where a plaintiff, by reason of business operations conducted outside the jurisdiction, has acquired a reputation with a substantial number of persons who would be potential consumers were it to commence business within the jurisdiction, the plaintiff has in a real sense a commercial position which it may turn to account. Defendants moving to annex such a reputation diminish this business advantage.

  • ConAgra was unable o show that it acquired a sufficient reputation in AU – evidence of its reputation in the US, occasional spillover magazine advertisements and the frequency of travel to the USA by Australians was considered to be inadequate

Temporal considerations

  • The two issues that arise are whether a plaintiff can bring an action based on a reputation acquired by virtue of pre-trade advertisements and publicity alone and the second is what happens when they cease trading

Pre-trade reputation

Fletcher Challenge Ltd v Fletcher Challenge Pty Ltd [1981] 1 NSWLR 196

Facts: It was announced on 22/10/80 in NZ that as a result of 3 companies amalgamating the plaintiff was to be incorporated in AU. This announcement was widely publicized in AU. On 23/10/80 the unrelated defendants reserved the corporate name Fletcher Challenge Pty Ltd in AU and successfully incorporated in 12/1980. In 1/1981 the plaintiff commenced proceedings in NZ and sought an interlocutory injunction requiring the defendants change their name as they were engaging in passing off

Powell J (204-205) noted that the first question is whether a sufficient prima facie of reputation in NSW was established

  • Even if the relevant date is the date of the reservation of the name, the plaintiffs name could be legitimately treated as the combined goodwill of all its holding companies

  • But if something more directly related to their corporate name is needed, at this stage of the proceedings (for an injunction) the announcement of the proposed amalgamation and new corporate name created a new reputation which preceded, though only by a few hours, reservation of the company name

Post-trade reputation

Ballarat Products Ltd v Farmers Smallgoods Co Pty Ltd [1957] VR 104

Facts: BP and its predecessor had title over the mark Farmers for small goods for many years. Seven years after ceasing to trade it sought to prevent the defendant from producing smallgoods under the name Farmers Smallgoods Company

Hudson J (107-108)

The defendant submitted that the action should fail since the name Farmers had no goodwill attached to it – the plaintiff didn’t use the name for 6 years and a mere intention to resume this branch of business with the name, even if established, wouldn’t be sufficient to entitle relief

The plaintiff submitted that they had a valuable reputation attaching to the use of the name which represented a commercial advantage they enjoyed as part of a business they never abandoned and that this subsisted such that goods sold under this name will still be regarded by the public. They further submitted that the likelihood of an assignee or the plaintiff resuming the business under this name was sufficient to establish likelihood of damage

  • His honour was satisfied that there subsisted a valuable reputation in the name Farmers in connexion with smallgoods and also that the plaintiff never decided to abandon the advantage which the name represented

    • Evidence showed retention of the premises and plant, negotiations for formation of the new company etc. Which showed they would soon seek to exploit the use of the name

  • The mere fact that the plaintiff isn’t for the time being producing or marketing any goods under the name doesn’t present any obstacle to the plaintiff establishing that the defendants conduct amounts to a representation to the public that the goods of the defendant are those of the plaintiff or a branch/subsidiary of it

    • Traders may for a lot of reasons discontinue goods but reputation in the goods under that name will survive for some period depending on how firmly it has become established and what steps are taken to keep it alive

    • The law doesn’t permit a rival to appropriate the name of a rival trader where this reputation is established

  • [598] The requirement of an intent to recommence trading is problematic but tends to be explained on the basis that without this there is no damage – Peter Waterman v CBS

    • But this is problematic given that loss of the ability to expand into a new market is a recognized head of damage

    • In actions under the TPA it has been held that there is no such requirement to recommence trading (Mark Foy’s v TVSN) i.e. consider the CLAW passing off and distinguish with statute

    • In more recent cases it has been suggested that this approach should be the same as in an action of passing off at CL (WMC v Westgold Resources)

Ownership of goodwill

  • Generally, to make out a passing off action the plaintiff will need to show it has an exclusive reputation in the sign or other indicia in question

    • There are exceptions – courts have been prepared to accept that 2+ traders who honestly and concurrently use the same sign/indicia have a protectable reputation and may be able to obtain remedies against TPs but not each other (Colorado Group v Standbags Group)

      • Whether this applies under CPL is less certain – Peter Isaacson Publications v Nationwide News – cf. Colorado for the contrary view

Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] AC 731

Facts: A key issue was whether a passing off action could be brought by one member of a class of traders all wuith a reputation in a sign describing a quality/characteristic of good produced by them (here advocaat) where a TP falsely represents by the adoption of that name that its goods have those qualities/characteristic

Lord Diplock (739-745) noted that this was a case of extended passing off as in the Champagne Case (J Bollinger v Costa Brava Wine). His honour considered the factual assumptions in that case:

  1. The plaintiffs carried on business in a geographical area of France – Champagne

  2. The plaintiffs’ wine is produced in Champagne and from grapes grown in Champagne

  3. The plaintiff’s wine has been known in the trade for a long time as champagne with a high reputation

  4. Members of the public or in the trade ordering/seeing wine advertised as champagne would expect it to be produced in Champagne from grapes grown there

  5. The defendants are producing a wine not produced in that geographical area and sold it under the name Spanish Champagne

His honour noted two features which distinguished this case from other cases:

  • The element in the goodwill of each of the plaintiffs was represented by their ability to use, without deception the word champagne to distinguish their wines from sparkling wines not made by the same process and from grapes produced in Champagne, and it was not exclusive to themselves but shared by other shippers of sparkling wines who satisfied this condition

  • That the class of traders entitled to the property right in the attractive force that brings in custom represented by the ability to call their wine champagne was capable of expansion

  • His honours noted the fact that different cases found different numbers of people entitled to the goodwill attaching to the ability to use a particular word – but noted that the principle must be the same whether the class of which each member is severally entitled to the goodwill which attaches to the particular term as descriptive of his goods, is large or small

    • But the larger it is:

      • The broader must be the range and quality of products to which the descriptive term used has been applied, and the more difficult it will be to show that the term has acquired a public reputation and goodwill as denoting a product endowed with recognizable qualities which distinguish it from others of inferior reputation that compete in the same market

      • The more difficult it must be for an individual member of it to show that the goodwill of his own business name has sustained more than minimal damage as a result of deceptive use by another

    • Also, as respects subsequent additions to the class mere entry into the market won’t give any right of action in passing off – they have to have used the descriptive term long enough on the market in connection with their goods and traded successfully enough to have built up goodwill in the business

  • His honour noted that in the champagne case, the descriptive term referred to a geographical provenance and the class entitled to it was thus restricted to those supplying it on the English market. This was similar to other cases:

    • Vine Products (The ‘Sherry Case’) where the word sherry was descriptive of wine (unless it was accompanied by a qualifying geographical adjective) was held to denote wine produced by the solera method in the province of Jerez de la Frontera Spain and the class entitled to the goodwill was restricted to suppliers on the English market of wine produced in that province

    • John Walker & Sons (The ‘Scotch Whisky Case’) the product was blended whisky and the class entitled to goodwill in the term ‘Scotch Whisky’ was not restricted to traders who dealt in whisky that had been blended in Scotland but extended to suppliers of blended whisky wherever the blending process took place provided that the ingredients of their product consisted exclusively of whiskies distilled in Scotland

  • The fact that in each of these cases the descriptive name was of a particular type/composition with a geographical connotation is without significance

  • If a product of a particular character or composition has been marketed under a descriptive name and under that name has gained a public reputation which distinguishes it from competing products of different composition, there is no reason to treat it differently from goods which share a particular locality

  • The Advocaat Case has been followed in a number of UK cases and there is no reason to think it wouldn’t be followed in Australia – they have come to be called cases of ‘extended passing off’

Misrepresentation or misleading or deceptive conduct

  • This is the second element – the latter being the requirement under the ACL

  • Whether there is a misrepresentation or MOD is determined in all the circumstances of the case, looking not only in similarity in the signs/indicia but also:

    • The extent of the plaintiff’s reputation

    • The nature of the G&S in question in question

    • The context in which those G&S are sold or provided and

    • The nature of the consumers of such G&S and how they would respond in making purchasing decisions

  • A number of different types of misrepresentation have been identified by courts – as to origin (from a plaintiff) as to qualities, cases of inverse passing off (where goods of the plaintiffs are misrepresented as being those of the defendants)

The relevant standard: Is mere confusion sufficient

  • One of the questions that arises is determining how definite a consumers view must be of the link between the plaintiff and defendant’s goods

  • Under AU law conduct causing consumers to be misled is often contrasted with “mere confusion” – that is “it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products have come from the same source” (Parkdale v Puxu)

    • The effect of Parkdale is that conduct merely causing a consumer to ‘wonder’ as to a particular state of affairs may have certain consequences under the Trade Marks Act but not be sufficient to constitute ‘misleading or deceptive conduct’

    • Even though these distinctions were drawn in Pre-TPA cases the difficulties involved are still significant:

Phones4u Ltd v Internet [2006] EWCA Civ 244

Jacob LJ opined that the distinction between mere confusion which is not enough and deception which as, as elusive. His honour was of the view that:

  • Once the position strays into misleading a substantial number of people (going from “I wonder if there is a connection” to “I assume there is a connection”) there will be passing off, whether the use is as a business name or a TM

    • This is a question of degree and there will always be some mere wonderers and some assumers there will normally be passing off if there is a substantial amount of the latter even if there is also a lot of the former

  • Another distinction is drawn on the basis of causative effects. Mere confusion has no causative effect whereas if one answers the question of “what moves the public to buy?” with whatever is the subject of the relevant complaint – then this is a case of deception

  • His honour said these aren’t complete tests instead holding that this would be whether what is said to be deception rather than mere confusion is really likely to be damaging to the claimant’s good will or divert trade from him”

  • The CB writers note that there would probably be very little difference in practice between these standards

Other Preliminary Issues

  • Three issues are canvassed:

    • Who must be misled for a contravention?

      • For passing off: A substantial number of consumers of the defendant’s goods must be misled, with the consumers being taken as they are found (Saville Perfumery v June)

      • For s 18: Campomar Sociedad v Nike suggests that whether conduct is MOD is judged by reference to a representative ordinary/reasonable member of the class to which the representation is made. But more recent cases have asked whether a ‘not insignificant’ number of prospective consumers have been misled (National Exchange v ASIC; Hansen v Bickfords)

    • What kind of evidence can be relied on

      • You can use survey evidence – a practice note exists on this (CM 13) - if it isn’t followed the court could use its discretion under s 135 EA to not admit it

    • The requirement of common field of activity This was controversial in the UK but it hasn’t been held to be a requirement here – rather it is a relevant factor in assessing whether a defendant has engaged in a misrepresentation (Henderson v Radio Corp; Compomar v Nike)

Types of misrepresentation: Origin

Misrepresentations involving descriptive words

Reddaway v Banham [1896] AC 199

Lord Macnaghten:

Here it was argued that using the expression ‘camel hair belting’ was merely conveying a ‘simple truth’

  • Macnaghten said this approach was circular. Really the phrase ‘camel hair belting’ can mean two things

    • For Banham’s works it could just be construed as belting made from camel’s hair rather than Reddaway’s Belting

    • But abroad, to German Manufacturers, Bombay mill-owners, up country natives it must mean Reddaway’s belting and it can mean nothing else

  • A statement which is literally true, but which is intended to convey a false impression, has something of a faulty ring about it. It is not a ‘sterling coin’, it has no right to the genuine stamp and impress of truth.

The importance of this point was reflected in the order – an injunction granted restraining he use of the words ‘camel hair’ in a manner that would deceive the public as to the origins of its belting.

Misrepresentations involving copying descriptive get-up

  • Misrepresentations as to origins can occur even if the same brand name isn’t used

Red Bull Australia Pty Ltd v Sydneywide Distributors Pty Ltd [2001] FCA 1228

Facts: Red Bull brought an action in passing off and for contravention of the TPA irt Sydneywide’s sale + distribution of ‘LiveWire’ in a certain get up. The cans had similar colour and employed a very similar get-up

Conti J noted the string resemblance of the two cans – in particular the steep line/thrust running diagonally from the top right all of which showed when placed together that one was “impressed with an instantaneous perception of the similarity of the get-up of the two packagings”. The colour combinations of the cans also tended to attract attention before even the brand names.

  • His honour noted in passing that this clearly showed SW adapted most of the prominent features of the can – but noted that the question of whether the packaging was deceptively similar was a question of fact.

  • His honour noted the case of Kettle Chip v Apand

    • In that case the Burchett J held that side-by-side comparisons to find differences wasn’t the appropriate approach.

    • In cases of items likely to be purchased for a small price without lengthy consideration, the comparison which must be made is between the impression of the applicants goods retained in a customer’s mind and the impression made by the sort of consideration he is likely to give to the respondent’s product before purchasing it”

      • In this case his honour held only a rare potato chip customer who previously studied the Kettle chips would go through this same exercise when seeing a packet later. If as he passed it, it appeared to be a Kettle product he would be likely to purchase it without further examination

  • His honour inferred that SW would have likely identified the advantages of free-riding on Red Bull’s advertising research and used its advantage as a distributor of the Red Bull Product to market their goods

  • SW would have clearly perceived that from a normal distance retail customers of energy drinks from shelves, there was scope for customers to mistake LiveWire from Red Bull – especially if no Red Bull products were on display

  • His honour noted that material to his decision was the fact that the market for energy drinks was an impulse market (as opposed to for example furniture and clothing retail markets where brands would be identified before purchase)

  • His honour observed that SW’s expert didn’t appreciate the significance of the circumstances of the similarity of the two cans in the context of few seconds of decision-making – especially for retail prodcuts within this price range

  • It is noted that in determining misrepresentation the intention to deceive was treated as an important factor in determining passing off and a contravention of s 52 TPA

Misrepresentations involving copying product appearance

  • The mere copying of aspects of another trader’s get-up may not demonstrate an intention to deceive – especially if adequate steps to differentiate its goods from those of the plaintiff are taken.

  • Further if the plaintiff doesn’t have a protectable reputation in AU, the intention to deceive is irrelevant (ConAgra)

  • As above, it will be difficult for a plaintiff to ever establish that it has reputation in the appearance of the actual good that it sells

    • Thus even if it can be established that the defendant deliberately copied the plaintiff’s product, such copying alone is unlikely to constitute misrepresentation

Parkdale Custom Built Furniture v Puxu Pty Ltd (1982) 149 CLR 191

Facts: Since ’76 Puxu designed and sold a range of lounge suits of distinctive appearance under the name ‘Contour’. In ’78 Parkdale sold a range of ‘Rawhide’ furniture which was virtually identical to ‘Counter’. A small label was swen to each piece of Parkdale’s furniture indicating that it was Parkdale Custom Built Furniture of the Rawhide range (as was the custom for labelling such furniture). Puxu sought an injunction under s 80 of the TPA for contravention of s 52.

Gibbs CJ noted two things:

  • Consideration has to be given to the class of consumers likely to be affected by the conduct (for s 52) and though it has been said the class can include inexperienced and gullible as well as the astute the section is directed at contemplating the effect of the conduct on reasonable members of the class

    • But what is reasonable depends on all the circumstances

    • In this case the persons likely to be affected are potential purchasers of a suit of furniture costing about $1500 who would if, acting reasonably, look for a label, brand or mark if they were concerned to buy a suite of a particular manufacture

  • The conduct of the defendant has to be viewed as a whole – not looking at certain words or acts which would on their own and out of context be misleading

  • The defendant didn’t contravene s 52 – generally the sale by a manufacturer of goods closely resembling another is not a breach of s 52 if the goods are properly labelled

    • Hundreds of articles of consumption look similar, though are made by different manufacturers – this can be for a variety of reasons [610]

    • In all such cases the normal and reasonable way to distinguish a product from another is through marks, brands or labels.

    • IF the product is properly labelled as to show the name of the manufacturer or source of the article, its close resemblance to another will not mislead an ordinary reasonable member of the public

  • If the label is removed by someone – it is not the conduct of the defendant that misled but the intervener

Brennan J noted that the CL stopped short of giving manufacturers a monopoly over goods of a particular design unless they were validly registered as such under the designs Act

  • Benchairs v Chair Centre – the mere copying of the shape of the plaintiff’s article isn’t a representation that the goods are that of the plaintiff. Anyone is entitled to copy goods on the market – a false representation and passing off only arises where a defendant does something further to suggest that the article they are selling is that of the plaintiff (e.g. direct use of their mark etc.)

  • ‘Contour’ wasn’t registered under the Designs Act and thus Parkdale was free to apply the design of these suits to their own manufacture (but obviously not to then go and pass off)

His honour noted that if s 52 authorized an injunction for copying designs it would run contrary to the careful balance struck by the statutory regime under the Patents/Designs Act

  • Conduct cannot be held to fall within s 52 unless a consumer, not labouring under any mistake or imperfection of understanding of law, would be or would be likely to be misled or deceived by that conduct

    • The scope of S 52 is to be determined by reference to the external legal order as it exists when the conduct is engaged in. Thus manufacturers exercising their freedom to copy designs not protected by valid registration won’t engage in conduct which is misleading or deceptive or likely to mislead or deceive

  • But where identical/similar goods are on the market it may take very little evidence of additional conduct to mere manufacture to establish an s 52 case

    • The degree of risk of confusion is material to an appreciation of the conduct of a trader marketing his goods for sale in competition

  • But here, where Parkdale labelled Rawhide in accordance with the practice of the industry and clearly labelled it to distinguish it from Contour there was no misleading or deceptive get-up

  • If consumers did mistake Rawhide for Contour it wasn’t induced by Parkdale’s conduct

  • It wasn’t MOD to manufacture/sell a lounge suite similar to Contour or even identical – something more needed to show conduct inducing a mistaken believe that Rawhide was manufactured by Puxu

Types of misrepresentation: Quality

AG Spalding & Bros v AW Gamage Ltd (1915) 32 RPC 273

Facts: In 1910-11 Spalding sold 3 varieties of Orb Footballs. In 1912 it advertised the Improved Sewn Orb Ball with its advertisements featuring a picture of it stamped with the words Orb; Specially Tested and referring to the patent under which the ball was made. It also withdrew its older balls which it considered to be defective. Gamage acquired a batch of the 1910-11 withdrawn footballs and advertised them as Improved Orb balls with the statement that they were a great improvement on the old one and using the Spalding advertisements for its 1912 line with a reference to the same patent number, offering them for half price.

Lord Parker extended the classic passing off formulation by corollary to no-one who has in his hands goods of another of a particular class has the right to represent them to be goods of another quality or a different class. Thus:

  • A cannot, without infringing the rights of B, represent goods which are not B’s goods or B’s goods of a particular class or quality to be B’s goods or B’s goods of that particular class or quality

  • Here anyone reading the advertisement would conclude that they were offering the newly catalogued Orb ball for half price

    • His Lordship opined that it was difficult to imagine that the advertisements weren’t deliberately framed to do so

Argument: The statements were only a repetition of what the appellants had themselves said in former catalogues about the ‘Improved 1910 Orb’

  • This is not so – no ball had been catalogued by the plaintiffs as being made under this patent. No ball in previous catalogues were stamped with the words ‘specially tested. The appellants were contrasting in their catalogue the new sewn variety with the old one sold by them.

  • Even if the respondents say they intended to contrast one moulded ball with another, the statement was untrue – the balls they were selling were old moulded balls of 1910-11 varieties. But the truth of the statement is irrelevant – the real Q is whether they were calculated to deceive. It seems that they were

His Lordship also rejected a submission that the question of being ‘calculated to deceive’ wasn’t one a judge could consider looking at the advertisements but had to be done on evidence. Whether the matter complained of is calculated to deceive or amounts to a misrepresentation is a matter for the judge looking at the documents and evidence before him to come to a conclusion. But there will be cases that a judge cannot properly come to a conclusion without evidence directed to the point.

  • Thus the misrepresentation was made out – and further was of such a nature as to give rise to a strong probability of actual damage to the appellants in their retail/wholesale trade

  • This type of misrep has more recently been recognized in cases of extended passing off. Similar cases include:

    • Taittinger v Allbev – A French Champagne maker prevented the distribution of a non-alcoholic drink sold as Elderflower Champagne

    • Chocosuisse Union v Cadbury – two Swiss chocolate makers prevented Cadbury from marketing UK-made ‘Swiss Chalet’ chocolate

    • Diageo NA v ICB – Smirnoff prevented the sale in the UK of a white spirit called Vodkat marketed in get-up reminiscent of vodka bottles

  • This form of passing off is part of a regime which could be used to protect against use of GIs

Types of misrepresentation: Inverse Passing off

  • This occurs where the defendant misrepresents that the plaintiff’s goods or services are in fact those of the defendant

Testro Bros v Tennant (1984) 2 IPR 469

Facts: Testro Bros (plaintiff – TB) produced tailored directories for hospitals. The defendants (former employee of TB) wished to produce the same in competition. In the course of pitching their idea to various hospitals that weren’t approached by TB, it was alleged they relied on samples of TB’s directories (that didn’t have any reference to TB) as their own work and represented that the hospitals referred to therein were the defendant’s clients. TB sought an injunction

Holland J framed the question to be answered – “whether it is a passing off or otherwise unfair trading…to represent to a prospective customer that you have been successful in the market with goods the equivalent of which you are offering to supply when the success has not been yours but that of another unidentified supplier whose goods you are then displaying to the prospective customer as your own and as an example of your success?”

  • It is strongly arguable that the answer is Yes. Here there is a misrepresentation in the course of trade, made to a prospective customer, calculated to injure the plaintiff’s goodwill and business, and is likely to do so

  • The defendants use of the plaintiff’s publication as samples of their own work is a false representation in:

    • Having produced that work they have proven capacity to produce more of the sme quality

    • The product is a success in the market, achieved by them

    • Their business reputation or reliability as a producer + supplier of this kind is already proved by the fact that this example has been approved by the administration of leading hoospitals

  • By this means they seek to appropriate themselves the success of the plaintiff in producing a quality product and finding a market for it.

  • If they succeed in obtaining contracts – they deprive the plaintiff of the opportunity to do so by using its own success.

  • Further, as the defendants expect to get success by displaying a false sample of their work – one may readily infer they wouldn’t have got it with a true sample

Order: The plaintiff was entitled to an interlocutory order restraining the defendants in appropriate terms from using the plaintiff’s publications for the purpose of obtaining business for themselves without at the same time clearly stating that such publications have not been produced printed or published by the defendants.

Types of misrepresentation: Sponsorship, endorsement or affiliation

  • In Campomar v Nike the HC was prepared to maintain an injunction restraining a Spanish manufacturer marketing his Nike Sports Fragrances on the basis that this would misrepresent that such products were “in some way promoted or distributed by Nike International itself or with its consent and approval”

  • This is an example of a situation where the conduct of a defendant supplying different G&S from those of the plaintiff could be characterised as a misrepresentation as to:

    • Origin

    • The existence of a sponsorship arrangement or other form of commercial association

  • Much depends in these cases on:

    • The extent of the plaintiff’s reputation

    • Whether that reputation is in relation to a variety of G&S

    • The way consumers would respond in seeing the defendant’s use of the plaintiff’s indicia

In determining whether or not a misrepresentation has been established

  • CF McIlhenny v Blue Yongder – the maker of ‘Tabasco’ sauce was refused an injunction to restrain the defendant from using Tabasco as the name of its company and in advertisements for its design services

    • Held: Even though the plaintiff took advantage of the well-known characteristic that Tabasco is hot, there was no misrepresentation because consumers wouldn’t conclude there was any commercial connection between the parties

  • Misrepresentation as to sponsorship/commercial association can also be made out where the defendant adopts an aspect of secondary branding in advertising unrelated goods – even in the absence of adopting primary branding

  • As the below case demonstrates, much depends on what indicia has been adopted and how much is used by the defendant

Telstra Corporation Ltd v Royal & Sun Alliance Insurance Australia Ltd [2003] FCA 786

Facts: Telstra ran an advertisement in the 90s involving Tommy Dysart playing the Scottish-accented character ‘Mr Goggomobil’ who used the Yellow Pages to find a mechanic recognizing his rare car and finally succeeding. Shannons, a car insurance company ran a series of TV and radio advertisements for its insurance products featuring Tommy reprising his character. The first involved him ringing a number of insurers to try to find insurance for his green Goggomobil and finding success with Shannons. The others featured the same character and reference to the Goggomobil but didn’t involve the use of the phone to solve ht eproblem. Telstra successfully argued that the first advertisement infringed copyright in the script to their first advertisement and that Shannons engaged in passing off and contravened s 52.

Merkel J began by defining secondary branding as what occurs when a word, character, symbol or image creates, on its own, instant recognition or association with a particular product or business.

His honour referred to two cases

  • R&C Products v SC Johnson where it was held that if advertising/get-up acquires special signification, then the adoption of elements of it can give rise to a misrepresentation if the steps are not taken to sufficiently distinguish the two products

  • The Duff Beer Case where it was held that the use by the respondents of the term ‘Duff Beer’ was MOD as it was likely to lead to an assumption by consumers that permission was given by The Simpsons to the respondents to produce Duff Beer.

His honour observed that Dystar’s character had become a form of secondary branding for Yellow Pages when it was employed in the context of the first Goggomobil advertisement (This seems to be the first question to ask()

“The real question…is whether the manner and context in which Dysart and the Goggomobil were used by Shannons... represented that YP had some association/connection with that advertisement or had endorsed or approved the services offered in it”

The First Shannon’s Advertisement

  • His honour held the extensive and significant contextual similarities between the First Goggomobil advertisement and the First Shannons Advertisement and the manner in which Dysart and the Goggomobil were used to ensure ‘instant recognition’ (by drawing on features of the YP advertisement) led to the conclusion that the Shannons advertisement was secondary advertising

  • Here the difficulty was that Shannons needed to use the features of the YP advertisement which made it famous and popular – thus the features they needed to and did retain were those that were most likely to result in it being perceived by the public as another YP advertisement or one connected with YP

    • These features which gave it instant recognition were the ‘warmth, humour and familiarity’ that made the advertisement popular – the use of Mr Goggomobil in a similar problem solving context

  • Thus the overall impression created by the showing of the FSA upon a significant portion of O&R members of the public was that YP was somehow associated/connected with the advertisement.

    • Thus the advertisement made a representation as to that effect

    • Whilst there would be doubt as to the precise form of the association, a significant portion fot he public would also be likely to conclude the FSA is another YP advertisement but that he is now using his telephone book to look for Shannon’s insurance rather than a repairer

  • These representations would cause ‘more than mere wonderment or confusion as to whether an association exists’ and travel into the areas of positive misrepresentation

Argument: The absence of any YP branding and the presence of Shannon’s branding would leave little doubt that this was an advertisement for Shannon’s Insurance. Rejected:

  • No. This is predicated on the public being well aware of Shannons and the unique role it plays in insuring special vehicles. This only constitutes a small section of the public and their likely response to the ad provides no answer to how the larger section may view it

  • The advertisement is also not inconsistent with it also being a YP advertisement or one with which they were associated/connected – e.g. a joint advertising agreement between YP and Shannons

  • This thus established a contravention of s 52 and a critical element of passing off

  • BUT the FSA wasn’t regarded as representing that the insurance services of Shannons were sponsored by YP – nothing in the context of the advertisement or secondary advertising suggested this. Further, there is nothing that would constitute a representation by YP relating to the quality of the services offered in the advertisement.

Subsequent Advertisements and the Radio Advertisements

  • The same reasons didn’t apply to these. These advertisements lacked the context of the FSA which gave rise to secondary advertising with YP.

  • Though these relied on Mr Goggomobil and his Scottish accent, they don’t do so in the humorous/entertaining problem solving context of the FSA.

    • This problem solving context was an integral aspect of the first one that led the court to conclude there was a representation of a connection with YP

    • (But these advertisements weren’t irrelevant and since they used the first one as a springboard, they could be relevant to the question of loss/damage)

Further cases: Fictional Characters

  • Further difficult issues can arise in cases where a defendant uses the image/likeness of a celebrity or fictitious character, divorced from any commercial context in which that image or character has been or is normally employed, to advertise or sell the defendant’s non-competing G&S

  • In such cases the character/personality merchandising, the only potential misrepresentation involved is that the defendant’s activities have been approved/endorsed by the plaintiffs. Australian courts have readily found this but the basis on which it has been done is elusive at best

  • Hogan v Koala Dundee

    • Facts: Paul Hogan brought an action against the operator of a store called ‘Dundee Country’ whose marketing and merchandise featured the drawing of a koala wearing features reminiscent of the Crocodile Dundee Character

    • Pincus J:

      • His honour was critical of the idea that the relevant misrepresentation was that there was a licensing/sponsorship agreement between Hogan and the store because consumers don’t generally think about these things

      • Instead his honour thought there was a ‘wrongful appropriation of a reputation or, more widely, wrongful association of goods with an image properly belonging to the applicant.

      • He thus found in favour of Hogan

  • Recent cases have instead focussed on consumer response

  • Pacific Dunlop v Hogan

    • Claim: Hogan successfully argued that Pacific Dunlop’s TV ad for its shoes featuring a parody of the famous that’s not a knife scene in Crocodile Dundee, using a character dressed similarly, constituted passing off and a breach of s 52.

    • All three judges thought that they key issue was whether consumers would think that Hogan consented to or authorised the advertisement. Two judges in the majority in the FC went further and considered whether consumers might change their behaviour as a result of the conduct

    • Beaumont J:

      • Disapproved of the distinction sought to be drawn by the ‘attention grabbing’ effect of the use of the character and the subsequent sales pitch. His honour instead held the thrust of the ad was identifying the image of Crocodile Dundee with the product to be sold – they aren’t portrayed as separate. Instead the image is put forward as endorsing the product

    • Burchett J:

      • Noted that character merchandising was completely difference from a logical argument for a product. Associations with desirable characters proceed subtly and foster a favourable inclination towards it, a good feeling about it and an emotional attachment to it.

        • No logic tells the consumer that boots are better because Crocodile Dundee wears them for a few seconds on the screen – but the boots are better in his eyes worn by his idol

      • Thus asking whether a consumer reasons that Hogan authorized the advertisement is to ask a question that is a mere side issue from the full impact of the advertisement

      • The consumer is moved by a desire to wear something belonging in some sense to Crocodile Dundee – while the arousal of that feeling by Hogan himself couldn’t be misleading (since the value he promises to the product will not be in its features but the association with himself)

        • But if the advertisement he didn’t authorize makes the same suggestion, it is misleading for the product sold by that advertisement if it really lacks the feature attributed to it

  • This approach doesn’t mean all celebrity images necessarily constitute passing off – much depends on the nature of the use and how consumers might be expected to resond

  • In Newton-John v Scholl Plough the court accepted that consumers would understand a magazine advertisement with an ONJ lookalike together with the words ‘Olivia? No, it’s Maybeline’ to bebe referencing ONJ’s appearance but not be understood to be in any way authorized by her and thus no misrepresentation occurred

  • The extract in page 621-623 from the NZ Case of Tot Toys somewhat criticizes the reasoning in Koala Dundee in essence suggesting its circularity and perhaps the need, rather than to prevent passing off, but the recognize property in names, reputations and artificial images. The extract questions the appropriateness of this but instead suggests:

    • “No case has presently been made for a strained…application of the conventional laws of passing off in order to protect artificial character-merchandising rights in NZ”. Thus his honour held that the onus still remained on the plaintiff to actually show deception by, for example, inducing the public to falsely believe that there is a commercial connection between the defendant and their goods and the plaintiff


Types of Damage

  • This is the final element required in Lord Oliver’s trinity

  • There are a number of kinds of damages:

    • Loss of business through diversion of trade – this most commonly happens in misrepresentation as to origin

      • For e.g. Reckitt v Coleman – the damage was lost sales of the plaintiff’s Jif Lemon as a result to the defendant’s conduct

    • Loss of market share - even without a net loss of sales

    • Harm to reputation (consumers might think less of the product as a result of the misrepresentation – e.g. Spalding v Gamage; Testro Bros v Tennant)

    • Loss of the ability to exploit reputation

      • For example being denied the opportunity to expand their business by providing new G&S

      • Foreign plaintiffs being pre-empted from trading in AU under the name which it has an established remedy in (in such a case there is an issue of whether they’d have to establish an intention to trade to get a remedy – ConAgra)

  • Particular care is needed in the personality/merchandising context – e.g. in Henderson v Radio Corp

    • Facts: The defendant used a photo of the plaintiffs (famous ballroom dancers) on the cover of one of its dance music records

    • Held:

      • The court disagreed that equity couldn’t restraint he appellants unless it was proved that respondent’ professional reputation was injured somehow or their personal capacity to earn money is impaired

      • It is true that the coercive power of the court can’t be invoked without proof of damage – but wrongful appropriation of another’s professional or business reputation is an injury in itself. The professional recommendation of the respondents is always theirs to hold and bestow at will – the appellant wrongly deprived them of this right and the payment which they would have been minded to give for their approval to the particular use

  • Given that misrepresentation or MOD always has to be established – this could mean that once it is concluded that consumers are likely to change their behaviour as a consequence of the defendant’s conduct – the loss of a licensing opportunity follows axiomatically

  • One controversial question is the extent to which dilution is a recognized head of damage in AU law

Harrods Ltd v Harrodian School Ltd [1996] RPC 697

Facts: The owners of Harrods department store sought to restrain the defendants from operating a prep school under the above name. The TJ held there was no misrepresentation and continued to discuss the question of damages.

Millet LJ noted the idea that demolishing the distinctiveness of a particular brand (in the Champagne Case, Champagne) leading to diminishing good will was a recognized head of damage. His honour cautioned that this could mark an unacceptable extension to the tort of passing off.

  • His honour noted that the law has never sought to protect value in a brand but rather the goodwill it generates. It further insists on proof of confusion to justify intervention.

    • But here, the erosion of distinctiveness of a brand due to degeneration into common use a generic term isn’t dependant on confusion.

    • The danger that if the defendant’s product was called champagne that all sparkling wines would take that name would exist even if no one was deceived into thinking that wine was really champagne.

  • His honour had a difficulty in accepting the idea that the law insists on both confusion and damage as an element but recognizes as sufficient a head of damage not depending on confusion.

Sir Michael Kerr (in dissent) disagreed and accepted that dilution was a recognized head of damage and the danger that the name would proliferate as being a real one

Damages and Remedies

  • [Passing off] To obtain an award more than nominal damages a plaintiff has to show that they have suffered actual damage by reason of the erroneous belief engendered by the misrepresentation.

    • If a plaintiff seeks injunctive relief they will need to show at least a likelihood of damage as a result of the defendants actual/proposed conduct

  • [s 18] A person seeking damages for contravention of this will only be entitled to an award of damages (under s 236 ACL) if that person has in fact suffered loss or damage by reason of the defendant’s conduct

    • A court may grant an injunction under s 232, 234 ACL to restrain contraventions of s 18 even where there is no imminent danger of substantial damages but it would be rare for a defendant who engaged in a misrepresentation which didn’t involve even a likelihood of any of the above forms of damages

  • Fraud in the sense of an intention to deceive is generally important in establishing a misrepresentation

  • IT appears to be that to get an award of damages or account of profits for passing off one also has to show fraud on the part of the defendant (but not for injunctive relief

ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302

Gummow J established the idea that in cases of passing off

  • If a mark is adopted honestly and innocently, either in ignorance of the existence of the plaintiff’s mark or belief that their mark was so different from the plaintiff’s that it wasn’t calculated to mislead or deceive would not lead to damages

  • But the continuing use of the mark after awareness that its use does cause the goods of the defendants to be mistaken for those of the plaintiff is no less fraudulent in the eyes of the court than a user with initial fraudulent intent

  • The remedies will also run from whichever times

    • That is if a defendant embarks on their activities fraudulently – remedies will run from that time

    • But even if the defendant was then innocent, pecuniary remedies will be available from the period of their persistence after notice

This means that under the ACL pecuniary remedies may be available even though they aren’t under passing off. Section 236 operates to give remedies for what could be innocent/non-negligent misrepresentations – statutory liability is unrelated to fault

  • Section 230(2) of the TMA provides that in a passing off action damages may not be awarded against a defendant who uses its own registered trade mark, who was unaware at the time of the action that the plaintiff’s mark was in use, and who, when it became aware of the plaintiff’s mark, immediately ceased using the mark

    • This defence isn’t available to actions for contravention of consumer protection legislation and is thus largely redundant

Extra Cases

Bodum v DKSH Australia Pty Limited [2011] FCAFC 98

Continuing from above, Greenwood J reached the conclusion that the appellant’s conduct was not of the kind to which s 52 was directed.

  • His honour noted that the Bodum coffee plunger wasn’t in the category of products for which no other design would be practical or where a design has been traditionally accepted as “most suitable for the purpose”. A vast range of coffee makers have been seen on the market

  • Further, Parkdale v Puxu recognizes that the sale by one manufacture of goods closely resembling another can involve a contravention of s 52 if the goods are not properly labelled

  • His honour noted the importance of context in considering whether the products were sufficiently differentiated – e.g. in Puxu the price of the furniture was high and people would look for the label

    • In this case the Euroline mark is on the box only and generally the product was displayed outside the box

    • The price of the two products are roughly the same

    • But the two products were, 86% of the time, sold in different locations

  • As to the first element, the name on the box won’t always be enough – in certain cases it will (e.g. Philips v Remington – the respondents mark was equally distinct and would clearly convey it wasn’t a Phillips)

    • BUT THIS CASE is closer to the Red Bull Case where the get-up of the two products was pretty much identical

    • Cases like Red Bull; Kettle; Reckitt & Colemna cannot simply be dismissed as being “purely impulse purchase” cases.

  • In this case, having regard to all of the factors his honour wasn’t satisfied the simple use of the name ‘EuroLine’ on the box had the effect of distinguishing the rival product from that of Bodum’s

  • Thus Bodum established a contravention of s 52 by reason of DKSH adopting features distinctive of Bodum’s coffee plunger and failing to distinguish its product which made it plain to consumers attracted to the rival product by reason of its distinctive reputation and secondary meaning subsisting in the features of the Bodum plunger, was not a Bodum plunger

    • Merely placing Euro Line on the box wasn’t enough and neither was placing a sticker with ‘MADE IN TAIWAN’ at the base sufficient

Class 3 and 4 – Introduction to Registered Trade Mark Law; Distinctiveness and other Absolute Grounds of Rejection


S 17 of the TMA provides – “A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”

  • In E&J Gallo v Lion Nathan their honours said that a trade mark must indicate “a connexion in the course of trade between the goods and the owner, the requirement that a trademark ‘distinguish’ goods encompasses the orthodox understanding that one function of a trade mark is to indicate the origin of ‘goods to which the mark Is applied”

    • Trademarks thus operate as a badge of origin

S 6(1) provides the definition of sign – “The following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent”

  • Generally signs will be either words or devices

    • Devices include words represented in a stylized manner (e.g. Coca-cola), combinations of text and graphic elements (the BMW logo), logos without textual elements (Nike Swoosh).

  • But the definition encompasses other indicia which when used irt G&S can be recognized as indicating trade origin – e.g. the Coke ‘contour’ of the bottle, the purple colour of chocolate for Cadbury, the Intel jingle etc.

  • The definition of sign in s 6 is open-ended and could potentially include tastes, textures, moving images and gestures

  • Though it has been said that a sign is anything that can convey information (Philips v Remington) the concept does have limits – e.g. a mere concept or idea won’t cut it, in Dyson v Registrar of TMS [2007] ECR the ECJ held that an application for a TM registration of a ‘transparent in or collection chamber forming part of the external surface of the vacuum cleaner’ not limited to any shape or form couldn’t be registered since there was no ‘sign’

  • This acceptance of a larger field of indicia raises a number of other issues – e.g. the effect on competition of monopolizing a shape or colour

  • Another issue is whether a distinction has to be drawn b/w the mark and the goods to which it is applied to ensure the natural/inherent form/feature of the goods that performs a particular function can’t be a part of the TM registration

Kenman Kandy Australia Pty Ltd v Registrar of Trademarks [2002] FCAFC

Stone J discusses whether there is a particular problem with the ‘shape’ TM included in s 6 and whether it is necessary that a TM must be able to be described as something distinct/separate from the goods irt which it is used and if so whether it is possible for a shape which is the whole shape of the good.

Separation of trademark from goods

In Smith Kline Windeyer J was considering a trademark registration application for the ‘total appearance of its capsules’ and to thus obtain a monopoly over ‘parti-coloured capsules containing pellets of different colours’. His honour held:

  • The definition of mark used in the TMA assumes that the mark is something distinct from the goods in relation to which it is used or to be used and assumes that the goods can be conceived as something apart from the mark – the mark is not the essence of the goods

  • A mark for the purposes of the Act must be capable of being described and depicted as something apart from the goods to which it is to be applied, on in relation to which it is to be used…It accords… with the various things included in the definition of mark

Later in the case of Philips v Remington (the three headed rotary shaver case) Burchett J treated the issue of separation of mark from goods as the same issue as the ‘capacity to distinguish issue’

Did the 1995 Act effect a radical change to trade mark law

  • Burchett J held that the inclusion of the word ‘shape’ into the definition of ‘sign’ which is the new point of reference to the definition of ‘trademark’ was not intended to effect a radical change in TM law.

    • His honour concluded that a shape that goods possessed because of their nature or because of the need for a particular technical result couldn’t function as a trade mark since such a shape couldn’t distinguish the trade source

    • His honour further opined that he didn’t regard this as precluding shape being registered as a TM where the shape is the whole or part of the relevant goods. He held that the 1995 Act didn’t invalidate e what Windeyer said – in fact he special cases where shape of goods can be a mark are those that fall within the principle expounded.

    • These are cases where the shape that is a mark is extra – added to the inherent form of the particular goods as something distinct which can denote origin.

    • Thus the word ‘shape’ being added to the statutory definition doesn’t call for a new principle or make ‘shape’ marks different from others. Rather it means that a mark remains something extra added to distinguish the products of one trader from another – a function which cannot be performed by a mark consisting of either a word or shape other traders may legitimately wish to use

  • In that case his honour noted that what was being contended was that the TMA could be used to give a monopoly over the presentation of a vital features of goods and that if this was so the proprietor of the mark would be in a better position than a patentee or proprietor of a registered design who only has a time limited interest

  • Burchett J then went on to quote Philips v Remington which also concerned a rotary shaver. IN that case Jacob J was explicit about the scope aspect – his honour accepted that it was possible to make an effective rotary shaver outside the claimed mark but that

    • It was also the case that the engineering scope for variation outside the mark was limited. The three-headed shape of the Philips design was one of the best possible ways of making a rotary shaver. Thus if the mark was registrable Philips would obtain a permanent monopoly in respect of matters of significant engineering design by virtue of registration

  • Stone J noted that the concern in these cases was about restricting access to functional features/innovations and this concern was expressed in the idea that a TM had to be in the inherent form of the goods

    • The inherent form of the goods can only refer to those aspects of the form that have a functional significance

  • Other jurisdictions are more restrictive – e.g. in the EU, the ETMD excludes from registrability shapes which ‘result from the nature of the goods themselves’ which are ‘necessary to achieve a technical result’ or which ‘give substantial value to the goods’

  • Three are three types of TM that can potentially be registered

    • Collective Trade Marks – signs that are used or intended to be used irt G&S provided in the course of trade by members of an association to distinguish those G&S from G&S provided by persons who are not members of the association

    • Certification Trade Marks – signs that are used or intended to be used to distinguish G&S provided in the course of trade that have been certified by a person or organization irt such things as quality, accuracy or some other characteristic, including origin, material or mode of manufacture, from G&S that haven’t been certified (e.g. the AU made Kangaroo)

    • Defensive Trade Marks – where a mark is registered irt certain G&S and the owner can show that if that mark were to be used on other G&S that use would indicate a connection between those other G&S and the owner, then such a mark may be separately registered irt those other G&S as a defensive TM. There is no requirement that defensive TMs be used irt those other G&S.

Procedural Issues

Application for registration

  • The application process for registration of a standard TM is set out in ss 27-29 of the TMA and Pt 4 of the TMR

  • Appications are made out to the AU TM Office, a division of IP AU. The office has detailed guidelines about the process in the TM Office Manual of Practice and Procedure

S 27 provides that a person may apply for registration of a TM irt particular G&S if:

  1. The person claims to be the owner of the TM; and

  2. One of the following applies

    1. The person is using or intends to use the TM irt goods and/or services

    2. The person has authorized or intends to authorize another person to use the TM irt goods and/or services

    3. The person intends to assign the TM to a body corporate that is about to be constituted with a view to the use by the body corporate of the TM in relation to the goods and/or services

S 27(3) provides that the application must contain a representation of the mark and must specify the G&S in respect of which the registration is sought, in accordance with the regulations (this is called the specification)

Regulation 4.3 sets out the requirements as to the form of the representation (and has special provisions for shape/colour/sound/scent)

Regulation 4.4 provides further detail about the specification, including these two requirements

  1. The goods and/or services must be grouped according to the appropriate classes described in Sch 1

  2. The applicant must nominate the class number that is appropriate to the goods or services in each group

  • The Office uses the International Classification of G&S that was agreed to at the Nice Diplomatic Conference under which goods are classified into one of 45 classes in Sch1 of the TMR, each class covering a different category of often related G&S

  • For standard applications, the filing date of the application becomes the priority datess 6(1); 12, 72 which is crucial for determining the marks as against which the application is assessed


  • Under s 31 a delegate of the Registrar (the examiner) will examine and report on the application as to whether:

    • It is made in accordance with the TMA and thus complies with the requirements in ss 27-28 and the associated regulations which involves determining whether the G&S have been correctly classified (s 32) but can also involve a consideration of whether the application is in fact for a TM as defined in s 17

    • There are any grounds for rejecting the application in ss 39-44 which are:

      • That it contains or consists of certain prescribed/prohibited signs (s 39)

      • Cannot be represented graphically (s 40)

      • Is not capable of distinguishing the owner’s goods and services from those of other traders (s 41)

      • Contains or consists of a scandalous matter (s 42(a))

      • If used, it would be contrary to law (s 42(b)0

      • Contains a connotation such that its use is likely to deceive or cause confusion (s 43)

      • Is substantially identical with or deceptively similar to an earlier registered TM or application irt similar or closely related goods and/or services (s.t. questions of honest current use of the two marks, or whether the applicant can show prior continuous use of its mark) (s 44, reg 4.15A)

  • Under s 33(1) the Registrar must accept the application unless satisfied that it has not been made in accordance with the act or there are grounds for rejecting it

  • IF the examiner indicates to the applicant that a ground for rejection exists, the applicant has a period of time (initially 15 months) to respond, otherwise the application lapses

    • The applicant can seek to argue its case informally with the examiner or put in evidence to overcome a ground of objection

    • The applicant can seek a hearing before the registrar (s 33(4)) an may appeal that decision to the FC (s 35)

Acceptance and opposition

  • If the application is accepted:

    • It will be advertised in the Official Journal of TMs (s 34); and

    • Under s 52(2) and reg 5.1 a TP has 3 months from the advertisement to lodge a notice of opposition. The grounds are:

      • Any of the grounds on which the application could have been rejected except s 40 (s 57; reg 5.18)

      • That the applicant isn’t the owner of the mark (s 58)

      • That wher ehte application was accepted on the basis of the applicant’s prior continuous use of the mark under s 44(4), the opponent can show earlier continuous use (s 58A)

      • That the applicant doesn’t intend to use/authorize the use of the mark in AU or to assign the mark to a body corporate for use in AU (s 59)

      • That an earlier mark had acquired a reputation in AU before the applicant’s priority date and for that reason the applicant’s use of its mark would be likely to deceive/cause confusion (s 60)

      • That the TM contains a false GI (s 61)

      • That the applicant was amended contrary to the Act (s 62(a))

      • That the applicant was accepted on the basis of false evidence (s 62(b)); or

      • That the application was made in bad faith

  • Both parties have periods of time in which they can lodge evidence to support their positions (reg 5.5-5.15) and both are afforded the opportunity to be heard on the opposition by a hearing officer (s 54)

  • At the end of opposition proceedings, the hearing officer decides whether to refuse to register the mark or register it (s 55) and the parties may appeal to the FC (s 56)

  • Further, s 38 allows the registrar to revoke acceptance if satisfied that the application shouldn’t have been accepted and it is reasonable to revoke acceptance

Registration, renewal and loss of rights

  • Once the opposition period expires or if opposition is unsuccessful the Registrar must register the mark (s 68) by entering certain particulars into the register (s 69) which can be searched through ATMOSS on the IP AU website

  • TM protection takes effect from the earliest priority date (s 72(1)-(2)) and lasts for 10 years from the filing date (s 72(3)). RTMs can be renewed under s 75 simply on the payment of renewal fees – thus making TM protection potentially perpetual

  • But registration can be amended or cancel, or the mark removed from the register in a range of circs set out in Pt 8, 9.

  • Three provisions are pertinent:

    • S 84A- the Registrar can revoke the registration of a mark within one year from registering that mark on much the same basis that acceptance of the mark can be revoked under s 38

      • This in effect allows the Registrar in limited circs to reconsider whether the application was made in accordance with the Act (s 31(a)), whether any of the grounds of rejection at the examination stage should have been raised (ss 39-44) as well as unsuccessful grounds of opposition (ss 58-62A)

    • S 88(2) – on the application of an aggrieved person a registration can be cancelled on grounds such as:

      • Any of the grounds on which the registration of the mark could have been opposed (s 88(2)(a))

      • The further ground that because of the circumstances applying at the time when the application for cancellation is filed, the use of the trade mark is likely to deceive or cause confusion (s 88(2)(c))

    • S 92(4) – a TM can be removed from the Register on the basis of non-use where the applicant either didn’t intend to use the mark when applying or has never in good faith used it, or where the owner hasn’t made good faith use of the mark in a particular 3 year period

Examination, opposition and cancellation grounds

  • The grounds on which an application for registration may be rejected (at examination or from successful opposition), or on which cancellation can happen can be considered as part of two broad categories:

    • Relative grounds – grounds involving potential conflict b/w the applicant’s mark an earlier registered or unregistered mark, or where another party has better title to the applicant’s mark.

      • The key relative grounds are in ss 44, 58, 58A, 60, 61 (as well as ss 42(b), 43, 62Awhich can operate as relative grounds)

    • Absolute Grounds – grounds that do not involve such conflicts but where there is some other inherent problem with the mark or application (ss 39, 40, 41, 42(a), 42(b), 43, 59, 62(a), 62(b), 62A)

Absolute Grounds


  • S 41 of the Act sets up a ‘distinctiveness’ test to ensure that parties aren’t able to register marks that lack distinctiveness

    • Generally these will be the types of marks that will ‘describe’ the G&S in question or semiotic qualities that other traders will legitimately wish to use

    • These words generally exist on a continuum of descriptiveness with names like Lindt on the one end, Crunchie in the middle and Dairy Milk on the other – ones like the latter get registration because they may have been used in the market place to such an extent that consumers have come to recognize it as indicating a particular trader’s G&S

  • Section 41 operates cumulatively such that certain factors are considered at different stages of the analysis in determining whether or not something is distinct

Section 41 – Trade mark not distinguishing applicant’s goods or services

  1. For the purposes of this section, the use of a TM by a predecessor in title of an applicant for the registration of the TM is taken to be a use of the TM by the applicant

  2. An application for the registration of a TM must be rejected if the TM is not capable of distinguishing the applicant’s G&S in respect of which the mark is sought to be registered (‘designated G&S’) from the G&S of other persons

  3. In deciding the question whether or not a TM is capable of distinguishing the designated G&S from the G&S of other persons, the Registrar must first take into account the extent to which the TM is inherently adapted to distinguish the designated G&S from the G&S of other persons

  4. Then, if the Registrar is still unable to decide the question, the following provisions apply

  5. If the Registrar finds that the TM is to some extent inherently adapted to distinguish the designated G&S from the G&S of other persons but is unable to decide, on that basis alone, that the TM is capable of so distinguishing the designated G&S

    1. The Registrar is to consider whether, because of the combined effect of the following:

      1. The extent to which the TM is inherently adapted to distinguish the designated G&S

      2. The use, or intended use, of the TM by the applicant

      3. Any other circumstances

The TM does or will distinguish the designated G&S as being those of the applicant; and

  1. If the Registrar is then satisfied that the TM does or will so distinguish the designated G&S – the TM is taken to be capable of distinguishing the applicant’s G&S from G&S of other persons; and

  2. If the Registrar is not satisfied that the TM does or will so distinguish the designated G&S – the TM is taken not to be capable of distinguishing the applicant’s G&S from the G&S of other persons

  1. If the Registrar finds that the TM is not to any extent inherently adapted to distinguish the designated G&S from the G&S of other persons, the following provisions apply:

    1. If the applicant establishes that, because of the extent to which the applicant has used the TM before the filing date in respect of the applicant, it does distinguish designated G&S as being those of the applicant – the TM is taken to be capable of distinguishing the designated G&S from the G&S of other persons

    2. In any other case – the TM is taken not to be capable of distinguishing the designated G&S from the G&S of other persons

TMs that are not inherently adapted to distinguish G&S are mostly TMs that consist wholly of a sign that is ordinarily used to indicate:

  1. The kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of G&S or

  2. The time of production of goods or the rendering of services

  • Marks where the Registrar can straight away say the G&S are sufficiently high on the continuum of distinctiveness to satisfy s 41(3) the goods are best known as prima facie distinctive

  • If the marks fall to be determined by s 41(6) then it is factual distinctiveness that has to be established

Inherent adaptation to distinguish: general principles

Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511

Kitto J’s judgment outlines the correct question to ask when considering distinctiveness

  • The ultimate question is not whether the mark will be adapted to distinguish the registered owner’s (RO) goods if it be registered and other persons consequently find themselves using it

  • The question is whether the mark, considered quite apart from the effects of registration, is scuh that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others

    • The applicant’s chance of success in this respect must largely depend on whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods (Lord Parker in RTM v W&G)

  • “It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Mark Acts a monopoly in what others may legitimately desire to use”

    • This involves consideration of the interests of strangers but not in the context of a vague decision of public policy. It is about the common right of the public to make honest use of words forming a part of the common heritage

Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273

Stone J looks at a number of things which are not inherently adapted to distinguish as the authorities provide no clear test:

  • It is clear that words which are descriptive are not inherently adapted to distinguish

    • Burger King v RTM – Whopper descriptive of large hamburgers

    • Eutectic Corp v RTM (‘eutectic’ descriptive of machines and welding tolls)

    • FH Faulding v ICIANZ (‘Barrier’ for hand cream)

  • This is so even if the word or words are contractions or corruptions of ordinary words

    • Tastee Freez’s Application (Tastee Freeze in connection with ice cream/water ices)

    • RTM v Muller (‘Less’ for pharma products)

    • Bausch & Lomb v RTM (‘Soflens’ for contact lenses)

    • Adv Hair Studio of America v RTM (‘hairfusion’ for a services affixing hairpieces to the head)

  • The same applies to pictorial descriptions of goods

    • Eclipse Sleep Products Inc. v RTM (six-sided border with circular ends as in the shape of a spring used in connection with a ‘Springwall Mattress’

  • Further, a name of a geographical location is not inherently adapted to distinguish goods because another trader may legitimately wish to use the name in connection with goods made in or associated with that place

    • Thomson v B Seppelt & Sons (Great Western for sparkling wines produced from grapes in the GW region of Victoria)

    • Clark Equipment (‘Michigan’ for earthmoving equipment)

    • Blount Inc (‘Oregon’ inside an oval device for power tool accessories)

    • Oxford University Press v RTM (‘Oxford’ for printed publications)

    • Bailey v Clark, Son and Morland (‘Glastonbury’s’ for sheepskin slippers)

  • Signs which are descriptive of the character/quality or use a geographical name are inherently not distinctive because the words have associations which invite confusion and because their registration would preclude the use of others whose goods have similar qualities

  • The absence of these associations and significations is what makes a sign inherently adapted to distinguish one trader’s goods from those of another – the concept is negative not positive

Assessing inherent adaptation to distinguish: Particular examples

  • None of these decisions clearly spell out when a mark is inherently adapted to distinguish to such an extent that they could be considered prima facie distinctive rather than fall under s 51(6) – no bright line can be drawn

  • But Clark Equipment suggests that only if it can be said that there is little likelihood or possibility that other traders would wish to use the sign in question for the sake of any ordinary signification it might possess that the mark will be prima facie distinctive – otherwise s 41(5), (6) fall to be considered

Geographical Terms

Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511

(The case involved an attempt to register Michigan for earth moving equipments)

Kitto J:

  • A geographical name when used as a TM for a particular category of goods may be saved by the nature of the goods or by some other circumstance from carrying its prima facie geographical and thus may be held to be adapted to distinguish the applicant’s goods

    • This will be because to an honest competitor the idea of using that name irt such goods in such circumstance simply wouldn’t occur (North Pole for bananas – The Glastonbury Case)

    • Or where by reason of user or other circumstances it has come to possess, when used in respect of the relevant goods, a distinctiveness in fact which eclipses its primary specifications

  • But the probability that some competitor, without impropriety, may want to use the name of a place on his goods must ordinarily increase in proportion to the likelihood that goods of the relevant kind will in fact emanate from that place

    • Thus a geographical location used simpliciter will not be capable of distinguishing if goods of that kind are produced there or may in the future be

  • These principles work against the appellant

    • Michigan is the name of a State...

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