Austlii Intellectual Property – passing off – bases and elements of passing off action – whether carrying on business within jurisdiction or place of business within jurisdiction – sufficiency of nexus with the jurisdiction – necessity and method of establishing reputation within jurisdiction – requirement of goodwill – whether fraud is a necessary element of passing off – relevance of establishing fraud.
Trade Practices – misleading and deceptive conduct – relationship between reputation in passing off action and establishing misleading and deceptive conduct.
Although the claim in passing off failed, and after a very full review of the common law authorities Lockhart J said that it was ‘no longer valid, if it ever was, to speak of a business having goodwill or reputation only where the business is carried on’, relying on ‘[m]odern mass advertising . . [which] reaches people in many countries of the world’, ‘[t]he international mobility of the world population’ and the fact that ‘[t]his is an age of enormous commercial enterprises’. ‘it is not necessary . . that a plaintiff, in order to maintain a passing off action, must have a place of business or a business presence in Australia; nor is it necessary that his goods are sold here’, saying that it would be ‘sufficient if his goods have a reputation in this country among persons here, whether residents or otherwise’.
Judges:
Lockhart(1), Gummow(2) and French(3) JJ.
Citations:
[1992] FCA 159, (1992) 23 IPR 193, (1992) Aipc 90-892 (Extract), (1992) 106 ALR 465, (1992) 33 FCR 302
Links:
Cited by:
Cited – Starbucks (HK) Ltd and Another v British Sky Broadcasting Group Plc and Others SC 13-May-2015
The court was asked whether, as the appellants contended, a claimant who is seeking to maintain an action in passing off need only establish a reputation among a significant section of the public within the jurisdiction, or whether, as the courts . .
Lists of cited by and citing cases may be incomplete.
Commonwealth, Intellectual Property
Updated: 18 May 2022; Ref: scu.566013