passing off
how many elements are required to establish passing off?
Three (In Reckitt & Colman [1990], Gummow J at 356 referred to the 3-part test as the 'classical trinity' of passing off).
what does a plaintiff have to establish to show there was goodwill and reputation attached to their goods or services?
The plaintiff must establish that there was goodwill or reputation attached to their goods or services prior to the date of the conduct of the defendant (Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1980] 2 NSWLR 851).
What assumption regarding damage is made (refer to Burshett J say in Pacific Dunlop at 583)?
Generally the court assume that "the cause of action for passing off is complete as soon as the relevant misrepresentation is made"
what remedies are available when passing off has been establised?
1. injunction - this is an equitable remedy and thus discretionary and can be either permanent or interlocutory in nature.
2. damages - compensation for loss that flows from the defendants conduct. two types: compensatory and exemplary.
3. account of profits - equitable remedy. only available in respect of profits which are dishonestly made and which it would be unconscionable for the wrongdoer to retain. only for profits after the defendant has knowledge of wrongdoing.
note cannot get both account of profits and damages.
What are the elements of passing off?
In Peter Bodum A/S v DKSH Australia Pty Ltd (2011) 280 ALR 639, at [212] stated the following elements to be established in order to determine whether passing off is apparent or not.
1. the plaintiff must have good will or reputation attached to the good or services;
2. there must be misrepresentation by the defendant, whether intentional or not, which leads or is likely to lead the public to believe that the goods or services offered by it are those of the plaintiff;
3. the plaintiff must demonstrate that they have, or are likely to, suffer damage by reason of the erroneous belief engendered by the defendant's mis representation.
what is the evidence required to show reputation?
a. time on the market
b. the nature and amount of promotion
c. the nature and degree of the sales networks
d. the volume of sales (quantity and monetary)
what actions must be taken by a plaintiff when seeking more than nominal damages?
If more than nominal dmaages are to be obtained, the plaintiff must establish compensable loss (Henderson v Radio Corp Pty Ltd [1960]).
What was established by the case ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992]?
The ConAgra Inc v McCain Foods case established that a plaintiff does not need to have a physical business presence or actually trade within the Australian jurisdiction to succeed in a passing off claim. Instead, the plaintiff must prove they possess a sufficient, existing reputation among potential customers within the jurisdiction.
what is element of misrepresentation?
misrepresentation, is where the defendant passes off some connection between the defendant (or their goods) and the plaintiff
this can include, use of the plaintiff's name, trade name or trade mark. Or imitating the get-up, design or advertising of goods.
name three cases where misrepresentation was an issue (from your content)
Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1980]
Reckitt & Colamn v Berdon Inc [1990]
Cat Media Pty Ltd v Opti-Healthcare Pty Ltd (2003)
Hastag Burgers Pty Ltd & Ors v In-N-Out Burgers Inc (2020)
Peter Bodum A/S v DKSH Australia Pty Ltd (2011)