References: [1992] FCA 159, (1992) 23 IPR 193, (1992) Aipc 90-892 (Extract), (1992) 106 ALR 465, (1992) 33 FCR 302
Links: Austlii
Coram: Lockhart(1), Gummow(2) and French(3) JJ.
Ratio: 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claim in passing off failed, and after a very full review of the common law authorities Lockhart J said that it was ‘no longer valid, if it ever was, to speak of a business having goodwill or reputation only where the business is carried on’, relying on ‘[m]odern mass advertising .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’.
This case is cited by:
- Cited – Starbucks (HK) Ltd and Another -v- British Sky Broadcasting Group Plc and Others SC ([2015] ETMR 31, [2015] ECC 19, Bailii, [2015] UKSC 31, [2015] WLR(D) 229, [2015] 1 WLR 2628, WLRD, Bailii Summary, [2015] 3 All ER 469, [2015] FSR 29,#, UKSC 2013/0274, SC, SC Summary)
The court was asked whether, as the appellants contend, 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 . .
(This list may be incomplete)
Last Update: 27-Jun-16
Ref: 566013