WEEK 6 Discussion Question
Chapter 6 (1,2 and 4)
Q1 Advice
Liability for contravention of s18 is strict. The defendant’s intention or state of mind is irrelevant. A person may breach s18 despite the fact that a statement or representation has been made honestly, innocently and without any intention to actively mislead or deceive. * Reputation: the need to establish the existence of a reputation or goodwill is more critical under passing off, as this requirement underpins the passing off action. The question is whether the use of the particular get-up or name by an alleged wrongdoer in relation to his product is likely to mislead or deceive persons familiar with the claimant’s product to believe that the two products are associated. * Misrepresentation: a conduct is likely to mislead or deceive meaning. The court will apply objective test in determining for itself whether conduct is misleading.
An applicant can seek to protect trade designations, must establish that such designations are distinctive of the business or product to which they are attached or in words that they are exclusively associated with the applicants in the minds of customers. Words that describe a product, in a generic sense, can be used by other trade and cannot be monopolised by one trader.

Q2 Advise the plaintiff, who plans to bring an action alleging: a) Passing off: involving the deceptive or confusing use of names, descriptive terms or other indicia designed to persuade purchasers to believe goods or services have an association, quality or endorsement which belongs to the goods or services of another. * Reputation ~ the need to prove the existence of a reputation or good will on the part of the plaintiff in the trade designation the subject of dispute. Goodwill is the first element required to establish passing off. In the context of passing off, goodwill is personal property of the plaintiff - that is, the business or goodwill which is likely to be damages by the misrepresentation made by a trader passing off his goods or services as those of the plaintiff. The terms "goodwill" and "reputation" have been used interchangeably and sometimes to mean the same thing. However, over the years, the case law has developed so that it has become clear that goodwill and reputation are two different things and that passing off protects goodwill and not reputation. * Misrepresentation ~ defendant’s conduct has misled, deceived or confused a significant number of persons in the marketplace into believing either that: * The defendant’s business is that of the plaintiff or that the defendant’s products are those of the plaintiff * The defendant’s business or products are associated with the plaintiff at least to the extent of implying approval on the plaintiff of the activities
Confusion alone does not amount to a material misrepresentation. This is because confusion does not only arise as a result of a misrepresentation. Confusion may arise from a number of factors - eg, because a person has drawn an incorrect conclusion or made assumptions * Damage ~ prove actual damage incurred if the defendant’s activities are allowed to continue. b) Breach of the Competition and Consumer Law (Cth): prevents the deception of consumers in the course of trade. * Reputation ~ the need to establish the existence of a reputation or goodwill is more critical under passing off, as this requirement underpins the passing off action. * Misrepresentation ~ advantage using s18 that it can be relied on matter what type of misrepresentation has been * Damage ~ it is not a requirement to prove damage if bringing an action under s18 of the ACL. This means that a misrepresentation made at an early stage in a statutory passing off type action will not be remedied by arguing that customers did not end up buying the wrong product.