PASSING OFF (Week 9)
Focus of passing off action is the protection of consumers from misrepresentations. However a clear vide of
protecting the substantial investments that businesses put into creating their reputation and goodwill. Although
the courts have been clear that passing off is not for the purpose of protecting businesses from competition or
providing monopolies: Con Agra v McCain; Cadbury v Pub Squash.
Protection of business reputation:
• Trademark infringement
• Tort of Passing Off
• Tort of injurious falsehood
• Misrepresentation within TPA
Difference between trade marks and passing off:
• Passing off is wider in the sense that it protects all parts of a business
• It is not necessary to show reputation under the Trade Marks Act, but it is necessary to establish under
• There is no need for an intention to infringe PASSING OFF ACTION:
N.B. Case Notes At End
Originally five elements: Advocaat case
2. Made by a trader in the course of trade
3. To prospective customers/consumers
4. Calculated to injure the business or goodwill of another trader
5. That causes damage
However Lord Diplock stated that all five were not all necessary; now three element: Consorzio v Marks &
1. Subsistence of some reputation or goodwill on the part of the plaintiff
2. Deceptive conduct on the part of the defendant
3. Existence or threat of damage to the plaintiff as a result of that conduct
N.B. Problems with Formulation:
• Gummow J has emphasised that law of passing off contains sufficient
nooks/crannies to make it difficult to formulate any satisfactory definition in short
term: Con Agra
• Deane J emphasised that all passing off actions may not show these characteristics:
Morgate v Philip 1. SUBSISTENCE OF SOME REPUTATION/GOODWILL
Goodwill: the benefit and advantage of the good name, reputation and connection of a business … the attractive
force which brings in custom: Inland Revenue Comm v Muller.
Test: Whether (product) has derived from the (advertising/get-up/trade dress/image/etc) a distinctive character
that the market recognises: Cadbury v Pub Squash. Reputation is not restricted to distinctiveness of the
plaintiff’s name or trade mark, but is broad and covers slogans, advertising, get-up, logos, mascots, figures etc:
Cadbury v Pub Squash (covered the image created).
Here, (plaintiff OR plaintiff’s goods) had a distinctive character of _____(e.g. image/quality/origin)____, which
a substantial number of local consumers could establish (Con Agra v McCain), and which distinguished (them
OR their goods) from (other traders OR other trader’s goods): Cadbury v Pub Squash.
Examples of Distinctive Character:
• Champagne (origin and quality): J Bollinger v Costa Brava
• Advocaat (style of product): Advocaat Case
• Hogan’s Get-Up (image): Hogan v Koala Dundee
• Mr Goggomobile solving problem – scene (image): Telstra v Royal & Sun
• Mario’s Appearance/Clothing (image): Nintendo v Care
• Photo of Henderson’s (image): Henderon’s v Radio
IF held by MANY or as a COMMUNITY:
(Plaintiff) is not required to possess exclusive reputation, so long as they have a real commercial stake
in the (business/product): Advocaat Case (plaintiff along with other Dutch companies manufactured and
marketed advocaat in UK).
IF NOT TRADING in at location:
Here, (plaintiff) is not currently trading in (Australia). This will not prevent them having a reputation
providing a substantial number of local consumers can establish it: Con Agra v McCain.
IF use EXPERTS to show reputation:
The reputation must be established with reference to a substantial number of local consumers, not
experts: Con Agra v McCain.
2) MISREPRESENTATION/DECEPTIVE CONDUCT
Conduct on the part of the trader that results in consumers coming to an erroneous conclusion or being confused
about a connection between the good/service of that trader and those of another.
IF DON’T REPRESENT that GOODS ARE OF ANOTHER: (e.g. a quality of goods)
In Advocaat case, it was accepted that the type of misrepresentation is not limited to representations that
the goods are those of another, and there it was enough that the goods had a certain quality which passed
the goods off as those of another. Another example is J Bollinger v Costa (although not followed in
Australia) where it was held that people who did not know much about champagnes could be
misrepresented that the wine had a particular quality (through use of the Champagne method).
Similarly, here ______________.
IF MISREPRESENT the existence or scope of CONNECTION BETWEEN BUSINESSES:
It is possible for the defendant to misrepresent the existence or scope of some connection between its
business and that of the plaintiff. An association with the licensed product is sufficient. The consumer
could assume that the defendant was one of the licensed consumers: Nintendo v Care. Here, ________.
IF MERELY IMITATE another product’s attribute/s: In Cadbury v Pub Squash, solo established an image as a man’s drink similar to beer. Pub Squash then
attempted to create a similar image. However the court held that there was only a small chance of
misrepresentation and to find otherwise would be to encourage monopoly. Another example is Con
Agra v McCain, where there was merely imitation. In this case it also held that imitation of another’s
name/product/get-up is not passing off. Similarly here, _______________.
IF USE PHOTO of ANOTHER: (e.g. if FAMOUS PERSON)
In Henderson v Radio, the Henderson’s image was used as a cover for a compilation. There it was held
that consumers could be mislead into thinking the Henderson’s had approved of or recommended the
record. Importantly Australia requires a degree of fame to be present for the action to be a
misrepresentation (i.e. people needed to know who the Hendersons are). Here, _________(discuss
whether people know of them – thus could be misrepresented)____________.
IF ONLY NAME / VERY LITTLE: (e.g VERY WELL-KNOWN - Simpsons)
In Twentieth Century v SA Brewing, the duff beer product was held to create an impression of
association with the Simpsons in the eyes of consumers, despite being a different colour, text and no