The tort of passing off seeks to protect goodwill. It has adapted to meet new circumstances and to restrain a broad range of conduct. Nevertheless, the question remains: in light of legislative reform, has the old tort passed on?
The article provides an overview of passing off, trade mark infringement, and misleading and deceptive conduct, and analyses the extent to which litigants might still benefit from bring an action for passing off (either in addition to, or instead of, an action for trade mark infringement or misleading or deceptive conduct).
Has the old tort passed on? The present diagnosis is that passing off has little meaningful work to do in Australia, due to the extension of the remedies available for trade mark infringement and the flexibility of the statutory prohibition of misleading and deceptive conduct. But reports of its death are exaggerated; it retains an ongoing utility for enlivening a greater scope of relief in certain circumstance.
Overview of Passing Off
The three elements which must be proved to establish passing off were identified by Lord Oliver in Reckitt and Coleman Products Ltd v Borden Inc (Reckitt):
The law of passing off can be summarised in one short general proposition – no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number.
First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying get-up (whether it consists simply of a brand name or trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff’s goods or services.
Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods and services of the plaintiff. Whether the public is aware of the plaintiff’s identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is a little or no public awareness of the identity of the proprietor of the brand name.
Thirdly, he must demonstrate the 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 the source of those offered by the plaintiff.
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