What is ‘passing off’?
A passing-off action is typically a complaint by one trader against a rival trader that the rival trader has engaged in conduct likely to mislead or deceive consumers of goods into thinking that those goods are sourced from, derived from, associated with, or sponsored by the complainant trader (i.e. your business), due to the rival trader using branding or product appearance very similar to that of the complainant trader such as:
- a brand name
- marketing materials
- the getup/signage of the retail premises
- an unauthorised reference to a well-known celebrity or fictional character
- the appearance of the product such as colour or shape.
To establish an action for passing off against a rival trader the complainant trader must establish:
- reputation in a name, brand-name or in the getup/ signage or premises, or in the appearance of a product
- misrepresentation by the rival trader
- the rival trader’s unfair misappropriation of goodwill of the complainant trader, or damage to that goodwill.
What is an action for misleading and deceptive conduct?
This is a cause of action arising under section 18 of the Australian Consumer Law contained in Schedule 2 of the Competition and Consumer Act 2010 and overlaps to some degree with a passing off action. (In this type of case, contraventions of other sections of the Australian Consumer Law may also arise.)
A breach of section 18 of the Australian Consumer Law can generally be more easily established than an action for passing off. Either a consumer or a complainant trader must show that a company has engaged in conduct likely to mislead or deceive consumers. It is not necessary to also show damage to the complainant trader’s goodwill.
Can such conduct also be copyright infringement?
That depends: is there copyright in the product itself, or in its branding or advertising? Are you the copyright owner? On this, please see our article on Copyright Infringement.
How can we help?
We can write to the other trader who is ripping off the design or branding of your products, with a Cease and Desist Letter. Or advise on how to respond to such a letter. If the dispute is not resolved quickly, we can advise on the next steps and represent you in court action seeking orders to remedy the situation.