A common situation in intellectual property disputes is the crossover between claims of trade mark infringement and the separate causes of action of passing off or misleading or deceptive conduct under the Competition & Consumer Act 2010 (Cth).
Passing off
Passing off is a tort (ie. a civil wrong) available under Australian common law and is concerned with protecting the goodwill and reputation of a business from misrepresentation by another trader.
To establish passing off, you need to show three things:
- A business has acquired reputation or goodwill in relation to their business;
- Another trader has engaged in a misrepresentation that leads to or is likely to lead the public to believe there was a connection between the business owner’s goods or services and the other trader’s goods or services; and
- Damage or the possibility of damage is likely to be suffered as a result of the misrepresentation (loss of current or future business as a result).
The tort of passing off can protect various aspects of a business including trade marks, trade names and the overall get-up of goods. Claims for passing off are often made in conjunction with trade mark infringement, and claims under the Competition & Consumer Act mentioned below.
If another trader has been found to have engaged in passing off, a business owner may choose between different remedies such as:
- Injunctions;
- Damages;
- Account of profits;
- Declaration;
- Delivery up.
Misleading or deceptive conduct
The Competition and Consumer Act 2010 (Cth) replaced the old Trade Practices Act 1974 (Cth), and includes as its Schedule 2 the Australian Consumer Law. Under s 18 of the Australian Consumer Law, it is prohibited for a person or business in trade or commerce to engage in conduct that is misleading or deceptive, or is likely to mislead or deceive.
The concept of misleading or deceptive conduct is broad and can encompass various forms of representations, including express statements, implied falsehoods, misleading product descriptions or demonstrations, and even silence in certain circumstances where there is a reasonable expectation of disclosure. Actual deception is not required; it is sufficient to show that the conduct is likely to mislead or deceive.
When considering whether conduct has been misleading or deceptive, a court will look at four things:
- who the conduct is targeted towards, which may be a single person, a group or the whole world;
- whether the conduct is directed at everyone who falls within the target group, regardless of age, education, or other factors;
- whether the conduct is, or is likely to be, misleading or deceptive; and
- the link between the conduct and the misconception by the person complaining the conduct was misleading or deceptive.
To be considered deceptive or misleading conduct, the conduct needs to be conduct that would deceive an ordinary member of the public in the target group.
Claims for misleading and deceptive conduct are often made in conjunction with trade mark infringement and claims for passing off under Australian common law, as mentioned above. Claims under the Australian Consumer Law provides broader protection as it does not require proof of damage, making it easier to establish a claim.
Crossover with Trade Mark Infringement
Trade mark infringement under the Trade Marks Act 1995 (Cth) addresses the use of signs that are substantially identical with, or deceptively similar to, a registered trade mark in relation to the goods or services for which the trade mark is registered. This can naturally include cases where the use of a mark is likely to cause confusion or deception among consumers, hence the overlap with passing off, and misleading and deceptive conduct under the Australian Consumer Law.
Get in Touch
If you believe that your intellectual property has been infringed, our team is here to help. We can review your intellectual property, both registered and unregistered, and advise whether you may have claims in either trade mark infringement, passing off or misleading or deceptive conduct. Prompt action to protect your rights, and quick resolutions to intellectual property disputes, help prevent further infringement by the same or other traders and reduce the impact on your business.
Contact us today to schedule a consultation and learn how we can assist with any intellectual property disputes or infringement your business may be affected by, including registering intellectual property such as trade marks.