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By Brian J Tran | Associate Lawyer

 

Passing-off.  What is it, and why bother?  Because, it is simply unlawful.

 

Under the Australian law, it is a creature of the common law and its source is not to be found in statute, but rather in court rulings of cases going back hundreds of years.

 

Generally speaking, parties alleging copyright or trade mark infringement will almost always allege passing-off as an alternative form of legal action.

 

“We can’t prove you’ve infringed our copyrighted works, or that you’ve infringed our trade marks, but we will get you one way or another under the tort of passing-off”, so the claimant says.

 

Can you spot the difference in the below link?

 

See http://www.worldtrademarkreview.com/files/71f49fb9-dc92-452c-b624-f94b43ef5ac4.jpg

 

In essence, passing-off is a serious tort (a civil wrongdoing) usually between one merchant or business and another, and it is established when one party “passes of” its goods as someone else’s goodsor represents an association with someone else’s business or their goods.

 

In order to be successful, the following elements must be proven in court:-

1.Reputation (in the business and their product)

2.Misrepresentation (by the defendant to the public)

3.Damage (to that business’ reputation or goodwill)

 

As extracted from the case of Consorzio del Prosciutto di Parma v Marks and Spencer plc [1991] RPC 351, these elements continue to be applied widely by Australian courts in their rulings today.

 

In case you may be sitting on the wrong side of the fence one day, do kindly note that in passing-off actions there will always be a very strong element of misrepresentation.

 

So as a rule of thumb, be sure that there can be no argument that a consumer could be fooled into believing that they are purchasingsomeone else’s goods when they are in fact purchasing yours.

 

In case you may be sitting on the wrong side of the fence one day, do kindly note that in passing-off actions there will always be a very strong element of misrepresentation.

 

So as a rule of thumb, be sure that there can be no argument whatsoever that a consumer could be fooled into believing that they are buying someone else’s goods when they are in fact buying yours.

 

Brian J Tran presents legal updates and seminars to clients and businesses to help raise awareness about legal obligations and minimise legal risk.  If you wish to arrange a time to discuss, please do not hesitate to contact Kingston Lawyers on (03) 9585 6455.