What is ‘passing off’?
A ‘passing-off’ action is available against a rival trader who has engaged in conduct that misleads or deceives consumers into thinking the goods are connected or sponsored by the complainant trader due to the rival trader using branding or product appearance very similar to that of the complainant trader. The latter can claim compensation for the damage done to proprietary interests in the reputation or goodwill. Examples of branding or product appearance very similar to that of the complainant trader are:
- 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?
Are you the copyright owner? That depends: is there copyright in the product itself or its branding or advertising? On this, please see our Blog 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.
Contact us today for a free initial no-obligation discussion about your situation.
