(Supreme Court of New South Wales) The plaintiff company was formed from three companies well-known in New Zealand. The defendant company were formed anticipating being sold to the plaintiffs at a substantial profit. Defence Counsel told the judge that the defendants had not traded and offered undertakings that they would not trade without making it clear that they were not associated with the plaintiffs, and that therefore the defendants would not make a misrepresentation which could found a passing-off action.
Held: The judge considered each of the characteristics of passing-off set out in the Warnink case. If the defendants started trading, they would be associated with or treated as part of the plaintiffs and that could affect the plaintiffs’ reputation. He granted injunctions preventing passing-off and requiring the name to be changed. The name of the company was an instrument of fraud as its use would mean that passing-off would result.
Judges:
Powell J
Citations:
(1982) FSR 1
Jurisdiction:
Australia
Citing:
Cited – Erven Warnink Besloten Vennootschap v J Townend and Sons (Hull) Limited (‘Advocaat’) HL 1979
The trademark was the name of a spirit-based product called ADVOCAAT. The product had gained a reputation and goodwill for that name in the English market and the defendants were seeking to take advantage of that name by misrepresenting that their . .
Cited by:
Cited – British Telecommunications Plc; Virgin Enterprises Ltd; J Sainsbury Plc; Marks and Spencer Plc and Ladbroke Group Plc v One In a Million Ltd and others CA 23-Jul-1998
Registration of a distinctive Internet domain name using registered trade marks and company names could be an infringement of a registered Trade Mark, and also passing off. It was proper to grant quia timet injunctions where necessary to stop . .
Cited – Global Projects Management Ltd v Citigroup Inc and Others ChD 17-Oct-2005
GPM had acquired an internet domain name ‘citigroup.co.uk’. Citigroup alleged passing off and trade mark infringement. The claimant complained of an unjustified threat. The defendant counterclaimed, and sought summary judgment.
Held: The . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, Company
Updated: 16 August 2022; Ref: scu.239093