There is also another, separate, area of law that a brand owner may be able to rely on, namely, passing off and Australian Consumer Law. An action for trademark infringement has many elements similar to an action for passing off and for a breach of Australian Consumer Law and so often these causes of action will be alleged at the same time as trademark infringement.
Passing off actions, in the context of ‘trademark’ passing off, involve an unregistered trademark, also known as a common law trademark. These cases arise in much narrower circumstance. In cases involving common law trademarks it is necessary to prove that there exists an established reputation in the infringed mark, that another party is using that mark in such a way as to misrepresent that the goods/services are associated with the mark, and finally, that their misrepresentation is causing damage.
Under sections 18 and 29 Schedule 2 (Australian Consumer Law) of the Competition and Consumer Act 2010 (Cth), a trader is prohibited from engaging in conduct which would be deemed as misleading or deceptive or likely to mislead or deceive. This includes prohibiting a trader from engaging in conduct which falsely represents that goods or service have the sponsorship, affiliation or approval with another, which it in fact does not have. The common law tort of passing off has similar operation to the above (but if anything is more onerous for the plaintiff).
There is a large body of case law devoted to the interpretation and application of the above principles, however, the essential elements you would need to show are that:
- You have a reputation such that your customers would be aware of your brand, or it is likely they would be aware of your brand; and
- there was a misrepresentation by the other party resulting in a mistaken belief by consumers of an affiliation between your brand and the other party.
In these cases, establishing a reputation is normally the most crucial and difficult element. Reputation in this instance is not referring to the repute or ethical nature of your brand, but rather how well known it is. And to prove this, it not enough to say “we are well known and have excellent brand awareness”. You will need to supply substantial evidence, such as sales volumes (confidentially), advertising exposure and in more contentious cases, survey evidence.
The take home advice in both passing off and Australian Consumer Law cases in the context of trademark breaches is that they require a large reputation and are fairly difficult to prove.