(Week 4) (Week 4) Beth Oliak Intellectual Property Winter Session 2015

Common law tort where someone represents that his goods or services are those of someone else (see also misleading and deceptive conduct in ACL) Misrepresentation can be about the name of the product, the visual image presented by the product, slogans relating to the product, etc,so long as they have become part of the goodwill or reputation of the product

Some signs cannot be registered (get-up, descriptive, colours, shapes (especially pre-1995 Trade Mark Act) provides a common law means of enforcing unregistered trade marks Protects proprietary rights in the goodwill of businesses by preventing competitors from passing off their goods as those of others Protects the public interest by ensuring that consumers are not misled as to the source of goods or services Protects only the association between a product and its producer (using distinctive features such as marks, letters, slogans, colours, sounds, etc) - not the product itself

Reddaway made machine belting sold under the name Camel Hair Belting; former employee Banham starts making machine belting sold under the name "Camel Hair Belting" Reddaway sued Banham for passing off. He argued that there was a large portion of the public who recognized the name "Camel Hair Belting" as his product. He was also able to demonstrate that there were people who were getting the products confused. Court of Appeal found to be descriptive thus not protectable House of Lords overturns words had acquired a secondary meaning and public associated name with product produced by Reddaway

a misrepresentation, made by a trader in the course of trade to prospective customers, direct or indirect, of goods or services supplied by him, which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and which causes actual damage to a business or goodwill of the trader by whom the action is brought or will probably do so.

Reputation in name, indicia, get-up in the relevant market Misrepresentation by using name, indicia, get-up that the others product is the original, or is otherwise associated, connected or endorsed by the original Damage

Broader than just commercial activity Henderson v Radio Corp Pty Ltd: a photograph of the Hendersons, two well- known professional ballroom dancers, was used without their permission on the cover of a ballroom dancing record. Radio Corp had falsely represented some affiliation between the Henderson and its record churches, charities, political parties

CS launched and advertised a lemon soft drink directed to adult males PS launches a similar product using similar names, styles and advertising Although CS advertising theme was copied by PS, the products were readily distinguishable; thus no passing off

Survey evidence, sales figures, advertising budget, magazines, films Knott Investments Pty Ltd v Winnebago Industries Evidence in support of spill-over reputation: evidence of its operations and reputation in the US and internationally; evidence that Winnebago RVs were featured in films, television programs and publications that were available in Australia; and evidence of travel between Australia and countries in which Winnebago had a presence, particularly evidence in relation to motor home rental holidays

Defendant misrepresents to the public that the source of its goods or services is the same as the source of those offered by the plaintiff Misrepresentation does not need to be intentional (so long as likely to lead public into believing that the goods are from the same source) Example: Pub refers to cola drink as Coke

BM Auto Sales v Budget Rent-a-Car BM commences a rental car business in the NT under the name "Budget. BRAC for many years has had rental car businesses everywhere else around Australia (except the NT ) using the name Budget Rent-a-Car BRAC had acquired a reputation in the NT jurisdiction and had business activities there, even though they were slight (namely taking of bookings from NT residents) Many prospective customers would be from other parts of Australia Injunction granted

Conagra Inc v McCain Foods ConAgra sells Healthy Choice meals in US; McCain begins to sell in Australia Question of fact whether have sufficient reputation with respect to goods within Australia in order to acquire a sufficient level of consumer knowledge of product McCain prevails: I am of the opinion that it is not necessary in Australia that a plaintiff, in order to maintain a passing off action, must have a place of business or a business presence in Australia; nor is it necessary that his goods are sold here. It is sufficient if his goods have a reputation in this country among persons here, whether residents or otherwise, of a sufficient degree to establish that there is a likelihood of deception among consumers and potential consumers and of damage to his reputation.

Knott Investments Pty Ltd v Winnebago Industries, Inc Applicant need not have conducted business in Australia to support a passing off claim What is required is proof of a substantial number of persons (whether residents or visitors) who were aware of the applicants product and who were thus potential customers. Such persons represent, in a real sense, a commercial advantage available to be turned to account were the applicant to commence business Such persons would be prospective buyers, hirers or users of recreational vehicles, being the class of persons who would be likely customers, whether direct or indirect Concept of Spill-over reputation

Public must associate product/service with a particular source; difficult to prove association if words are descriptive: McCain Foods v County Fair Foods McCain Oven Chips cannot prevent use of Country Fair Oven Chips Hornsby Building Information Centre v Sydney Building Information Centre Building information centre : when adopting descriptive or non-distinctive words as trade marks, others may adopt them and "the risk of confusion must be accepted". Kosciuszko Thredbo Pty Limited v ThredboNet Marketing Pty Limited Thredbo: Ordinarily, a trader is entitled to use a geographic name honestly and accurately unless that name has become distinctive of another's goods or services and the trader is using the name to pass off its good or services as those of the other.

Mark Foys Pty Ltd v TVSN (Pacific) Ltd (2000) Tub Happy Case High Court found that the defendants were advertising "Tub Happy Cotton Fresh" for the purpose of indicating a connection between its goods and the plaintiffs Tub Happy goods which did not exist

Sykes v John Fairfax (1977) Pierpont Speaking journalist who invented the pseudonym was entitled to continue to use it after he left the publication (readers associated the name with a particular author)

Reckitt & Colman Products Ltd v Borden lemon shape Cadbury Schweppes v Pub Squash Macho advertising campaign lemon colour of cans beer-label-like labelling Mars Australia Pty Ltd v Sweet Rewards Pty Ltd words Maltesers red colour on packaging images of malt balls

Red Bull Australia Pty Ltd v Sydneywide Distributors Pty Ltd Packaging get-up of LiveWire can sailed too close to the wind to the RED BULL Energy Drink can

Reckitt & Colman Products v Borden Inc Reckitt sold lemon juice in lemon shaped containers Deception not in the sale of plastic lemons, as Reckitt had no proprietary rights in lemon containers - the law of passing off does not supplant the laws of designs, copyright or patents. Deception was in selling containers so fashioned as to suggest that the plastic lemons emanated from the same source

Miller v Britt Allcroft (Thomas) LLC (2000) 52 IPR 419 (Thomas Shop) The Thomas Shop in Adelaide sells Thomas the Tank Engine items Mrs Miller's shop named The Thomas Shop does represent to the public that she has some licence from or approval from the owners of the Thomas logos and marks and goodwill to conduct the shop. Here her disclaimer above the cash register was insufficient because: no disclaimer on the exterior of the shop; the disclaimer only at the point of sale; and promotional material provided little if any disclaimer

Telstra Corporation Ltd v Royal & Sun Alliance Insurance Ltd (2003) 57 IPR 453 (Goggomobil case) Yellow Pages commercials (1991-1996) featuring a man with a thick Scottish accent making a series of telephone calls to find a repairer for his Goggomobil Insurer uses same man and similar themes passing off Twentieth Century Fox v Lion Nathan (Duff Beer) (1996) Duff Beer is from the tv show Simpsons Court found likely association in public mind between the Simpsons brand and characters and the defendants product despite no use of Simpsons characters or the Simpsons Duff Beer design Hogan v Pacific Dunlop (Crocodile Dundee) (1989) 14 IPR 398 Hogan successfully sued a shoe manufacturer for passing off in relation to an advertisement spoofing his character in the movie

Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 84 IPR 12 Principal component in the Maltesers get-up was the word Maltesers It was highly unlikely that any ordinary consumer of chocolate confectionery could mistake something which is not called Malteser for a Malteser. Use of name Delfi and different shade of red on packaging also showed the two products did not originate from the same source The similar use of floating chocolate balls did not overcome the differences

ConAgra v McCain Foods Passing off stops persons and companies gaining a commercial advantage through wrongfully taking the attributes of another's business if it causes or is likely to cause that other person's business some damage The basis of the cause of action lies squarely in misrepresentation, for its underlying rationale is to prevent commercial dishonesty

Campomar Sociedad v Nike International passing off restrains a person from use of names, descriptive terms or other indicia to persuade purchasers or customers to believe that goods or services have an association, quality or endorsement which belongs or would belong to goods or services of, or associated with, another or others

Cadbury Schweppes v Pub Squash Lemon squash (no passing off) Reckitt & Colman Products Ltd v Borden Inc Lemon juice (no passing off) Bollinger v Costa Brava Wine Co Limited Champagne (yes passing off) Mars Australia v Sweet Rewards Malt balls (no passing off)

REA Group Ltd v Real Estate realestate1.com.au (no passing off in relation to realestate.com.au) Spanline Weatherstrong Building Systems Pty Ltd v Tabellz Pty Ltd Double-U roof sheets (no passing off) Kosciuszko Thredbo Pty Limited v ThredboNet Marketing Pty Limited Thredbo (no passing off)

Henderson v Radio Corp ballroom dancers Unaided by evidence, one might consider that the dancing figures merely indicate the type of music on the record and that it is not possible to come to the conclusion for which the respondents contend. But one is not unaided by evidence and, having regard to the fact that the record was primarily intended for professional dancing teachers, and to the un-contradicted evidence of four experts in that field, we are of opinion that the proper finding is that the class of persons for whom the record was primarily intended would probably believe that the picture of the respondents on the cover indicated their recommendation or approval of the record. The only rational purpose of the wrongful use of the respondents' photograph on the disc container was to assist the sale of the disc it contained.

Honey v Australian Airlines Gary Honey amateur athlete on poster promoting sport people would not believe giving endorsement to airline Talmax Pty Ltd v Telstra Corporation Kieren Perkins swimmer photo of him wearing a shirt with a Telstra logo; Telstra uses the photo in advertising person more likely succeed the more commercial the context, and the more likely that person/category of person, has a practice of endorsing such businesses, goods or services more likely that court considers that public assume some commercial arrangement in place Perkins deprived of opportunity to commercially exploit his name, image and reputation

10 th Cantannae Sue Smith just took control of her video recorder Sue Smith journalist sues no association McIlhenny v Blue Yonder Holdings Tabasco Design for exhibition design services goods or services not likely to appear to be connected no likelihood of deception or confusion

Cadbury Schweppes Pty Ltd v Darrell Lea Chocolates Pty Ltd (No.8) [2008] FCA 470 (11 April 2008) Darrell Lea sells chocolate in purple wrapper Seeing chocolate in a purple wrapper with Darrell Leas name on it in a Darrell Lea shop does not make me think it comes from Cadbury.

Tabasco Design (design exhibition stands); no evidence that anyone had actually been misled, deceived or confused It is one thing to hold, on the basis of evidence, that members of the public who see a product promoted by reference to a scene from a film or a character from a television series will conclude that there is a commercial connection. It is another, I think, to conclude in the absence of evidence of actual confusion that someone in the respondents' target market will take it that the use of "Tabasco" as the name of the provider of exhibition design services has a commercial connection of some sort with the maker of the only product known as "Tabasco", a spicy and hot sauce. It is one thing to suppose a connection where the brand "Dunhill", associated with an "upmarket" cigarette, starts to appear on an expanding range of other - and different - "upmarket" goods (and even then, the expert evidence suggested, one might have wondered rather than jumped to the conclusion that there was an association, when one first saw that occurring); it is another, as a person with marketing responsibilities seeking the services of an exhibition designer, to conclude that a designer whose services are promoted under the name "Tabasco" has a commercial association with the well known sauce of that name. The far more likely conclusion is, I think, that, without any association or permission the designer has - as the fact is - perhaps cheekily used a name which, by reference to its only other known use, conjures up "hot" associations.

Character merchandising through television advertisements should not be seen as setting off a logical train of thought in the minds of television viewers. Its appeal is nothing like the insistence of a logical argument on behalf of a product, which may persuade, but also may repel. An association of some desirable character with the product proceeds more subtly to foster favourable inclination towards it, a good feeling about it, 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. Pacific Dunlop v Hogan per Burchett J

Twentieth Century Fox Film Corporation v South Australian Brewing Co Ltd (Duff Beer) No disclaimer or overt connection to Simpsons Offered to provide a disclaimer but consumers may have thought it was a joke Britt Allcroft v Miller (Thomas Shop) Disclaimer at cash register No disclaimer at front of store No disclaimer in advertising material

Advertisers associate with event without paying any sponsorship fee 1984 Olympics Kodak sponsors TV broadcast, even though Fuji is official sponsor of Olympic Games 1998 FIFA World Cup - Nike sponsor teams, even though Adidas is official sponsor 2010 FIFA world cup Dutch brewer gave away orange clothes to supporters even though Budweiser official sponsor 2012 Olympics Nike Find Greatness the other Londons http://mumbrella.com.au/nike-olympics-ambush-ad- touches-down-in-australia-106305

Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd (2002) 55 IPR 354 Passing off trumps trademark: CI JI Family Pty Limited v National Australian Nappies (NAN) Pty Limited [2014] FCA 79

operation of s18 is not restricted by the common law principles relating to passing- off section provides the public with wider protection from deception than common law statute provides an additional remedy Parkdale v Puxu

A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive

Person corporation - Competition and Consumer Act (Cth) Individual - Fair Trading Act (NSW)

In trade or commerce Re Ku-Ring-Gai Co-operative Building Society (No 12) Ltd The terms 'trade' and 'commerce' are not terms of art. They are expressions of fact and terms of common knowledge. While the particular instances that may fall within them will depend upon the varying phrases of development of trade, commerce and commercial communication, the terms are clearly of the widest import... They are not restricted to dealings or communications which can properly be described as being at arm's length in the sense that they are within open markets or between strangers or have a dominant objective of profit-making Concrete Constructions (NSW) Pty Ltd v Nelson The conduct must be in itself an aspect or element of activities or transactions which, of their nature, bear a trading or commercial character Argy v Blunts & Lane Cove Real Estate NOT vendor of home not engaged in trade or commerce (but real estate agent and vendors solicitor)

Campomar v Nike consider members of a class to which the conduct is directed "ordinary" or "reasonable" members of class whether the misconceptions, or deceptions, alleged to arise or to be likely to arise are properly to be attributed to the ordinary or reasonable members of the classes of prospective purchasers disregarding assumptions made by persons whose reactions are extreme or fanciful Parkdale v Puxu not protect persons who fail to take reasonable care of their own interests

Dont need intention Parkdale v Puxu conduct not intended to mislead or deceive and which was engaged in "honestly and reasonably" might nevertheless contravene Campomar v Nike where there is finding of intention to deceive, the court may more readily infer that the intention has been or in all probability will be effective.

Parkdale v Puxu misleading and deceptive both share a concept of leading into error statement will be considered misleading if it induces or is capable of inducing error, leading a person into error mere confusion is not enough erroneous assumption; not include assumptions whose reactions are extreme or fanciful; not persons own erroneous assumption not attributable to respondent Taco Co of Australia v Taco Bell question of fact to be determined in the context of the evidence of the surrounding facts and circumstances evidence of actual deception is persuasive but not essential

nothing capricious or unreasonable or unpredictable in Sheppard J's conclusion that the placing of the "NIKE SPORT FRAGRANCE" product in the same area of pharmacies with other sports fragrances was likely to mislead or deceive members of the public into thinking that the "NIKE SPORT FRAGRANCE" product was in some way promoted or distributed by Nike International itself or with its consent and approval

Person in trade or commerce in connection with supply or promotion of goods or services (a)false or misleading representation goods of a particular standard, quality, value, grade, composition, style or model or have had a particular history or particular previous use (g)false or misleading representation goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; (h)false or misleading representation that person making the representation has a sponsorship, approval or affiliation (k)make a false or misleading representation concerning the place of origin of goods

s224 - Pecuniary penalty (s29) s232 injunctions s236 - damages s237 compensation order s243 other orders Declare contract void Refuse enforce contract s246 non-punitive orders Community service orders Direction to establish compliance program / training program Corrective advertising s247 adverse publicity s248 disqualify managing corporations (s29)

Documents

(Week 4) (Week 4) Beth Oliak Intellectual Property Winter Session 2015