The latest issue of LexisNexis' Australian Banking and Finance Law Bulletin has just been released. We have an amazing line up of authors contributing 7 quality articles. Read my General Editor's note to get a taste of what's covered.
What is passing off? Revlon’s Mitchum Clinical deodorant v Unilever's Rexona and Dove deodorants
To put simply, passing off is where there is a misrepresentation that a business’ goods or services are those of another business. Under an action for passing off, protection is given to those who have developed goodwill or reputation. For a claim of passing off to be successful, the claimant has to prove that a misrepresentation has been made by another in the course of trade to actual or prospective customer that injures and causes damage the claimant's business, goodwill or reputation. The misrepresentation can be one that relates to the likeness of a product or the trade name of a service provider.
On 19 August 2014, Gleeson J of the Federal Court of Australia (FCA) handed down the latest judgement in this area of law - Unilever Australia Ltd v Revlon Australia Pty Ltd (No 2)  FCA 875. You can read the full judgment on the FCA’s website.
The parties involved, being Unilever and Revlon, are competitors in the supply of deodorant products. Unilever's deodorants are branded Rexona and Dove, where as Revlon's deodorant is branded Mitchum Clinical. The initial action was by Unilever, who claimed that Revlon breached the Australian Consumer Law in terms of the representations Revlon made in advertising and on the packaging of Revlon’s deodorant. In response to Unilever’s claim, Revlon counter-claimed that Unilever breached the Australian Consumer Law in the same way, and in addition, engaged in passing off. Revlon wanted to obtain an injunction so as to restrain Unilever from selling or marketing Rexona clinical protection products in Revlon’s new packaging.
In his judgement, Gleeson J explained why Revlon was unsuccessful in restraining Unilever in the use of the particular packaging. In essence, it was determined that it would be unlikely that a reasonable consumer would confuse the packaging of the two competing brands. It other words, Revlon failed to demonstrate that Revlon’s packaging had become so distinctive that in the minds of the potential customer that Revlon had acquired trade reputation associated with it.
This is an interesting case to read, with important lessons to be learnt. In matters relating to consumer protection, for lawyers acting for SMEs and large corporations alike, it is worth remembering that, in addition to proving deception or that confusion has been caused, actual proof of damage is required to succeed in an action for passing off.
This post first appeared on CPD Interactive's "Legal Natter's Blog".
Thank you to Peter Frankl of Legal Practice Intelligence for interviewing me for his special report on legal knowledge management - "Bring Your Precedent Documents to Life - Just Add KM”.
For legal advisory assistance or knowledge management solutions, just contact us for assistance.
Search and discovery makes up a bulk of a law firm’s routine tasks. When each search generates a few pages of linear information in the form of PDF reports and each matter requires a few searches, the result is pages and pages of information. This information then needs to be sifted through to exactly what’s relevant. If a dollar value is allocated to the time it takes to do this task, it’s easy to see how the cost of this laborious process can eat into a law firm’s revenues.
As a practicing lawyer I can appreciate the challenges that lawyers face when it comes to management of commercial information. Working with Encompass, however, I have realised that data visualisation can be a lawyer’s best friend. Encompass has recently released their whitepaper titled "Lean Legal" showing how visualisation of information can help lawyers escape the world of words and enter a world of pictures. This helps cut down hours of reading and searching into minutes and even seconds. While the concept of visualisation is not new - we all remember the old adage ‘a picture is worth a thousand words’- the legal world has only just started to understand its benefits.
Visualisation enables us to see the concepts that we are learning in a more interesting and more useful manner. One area where visualisation is having an enormous impact is in interpretation of legal search results from registers like ASIC, NPII or PPSR.
So here are five reasons why your firm needs to get familiar with data visualization:
1. Trimming the fat: Visualisation makes it easy to understand and analyse information at hand. This enables legal practitioners to take a ‘lean approach’ to information management for operational efficiencies in a challenging and competitive environment.
2. Getting there faster: Lawyers always need to quickly extract relevant content from many searches and use that information to advise a client, prepare transaction documents or draft a legal opinion. Visualisation technology helps lawyers speed up processes without compromising on the quality of their advice.
3. Good housekeeping: More often than not, the searches from a matter need to be referred to at a later stage by other members of the team. Searches may also need to be repeated as a matter develops (mostly just before a deal settles) for comparison, making the initial search extremely important. Visualisation technology based on Software as a Service (SaaS) platform allows easy access for stored information and visualisation makes it easy to everyone to understand it.
4. Competing and differentiating: With the help of advanced visualisation software, lawyers can abandon archaic traditional practices and drive better engagement by presenting their advice (at least in part) in a visual format. Visualisation software can also help uncover new business opportunities by showing clear links between people, properties and company ownerships, securing clients for additional consultation.
5. Taking down barriers: Regular cross-border and cross-departmental communication, whether it is with clients or team members, is essential to the success and reputation of a law firm. By building a picture of the critical information involved in a matter, lawyers can collaborate and communicate more effectively. Language, distance or technical legal knowledge are all barriers that can be minimized through the use of visualisation, not to mention the ability to share information quickly in a universal language.
Technological innovation in the form of visualisation is great news for the modern day legal practice. Given the magnitude of searchable data, we need something in our toolbox to facilitate lean data management practices. Lean means getting the most out of a process with the least amount of time and effort spent, eliminating waste of any kind. An interactive solution designed for professional audiences that can tease out connections and turn complex data into simple pictures is a clear step forward.
This post first appeared on the ALPMA blog "A Survival Guide for Legal Practice Managers".
Leading American authority on good legal writing, Bryan Garner, visited Australia in August 2012 and met with our judges in Sydney and Melbourne. As the editor in chief of Black’s Law Dictionary and the author of many leading works on legal style, our judges would have had a very interesting and dynamic discussion with Garner on legal writing. In a recent article published in the American Bar Association Journal, Garner challenged all lawyers to write shall-less documents. I recently authored an article on this subject matter (when I was Counsel at Allen & Overy’s Banking group). The article appeared in the September edition of the firm’s Australian Banking and Finance Update. Below is an extract of my article. For the full article (and other articles in the September newsletter), contact Allen & Overy.
Drafting lessons learnt from the common law approaches to statutory interpretation
The well-established rules our judges apply to statutory interpretation can help shed some light on why we should abandon all uses of “shall” in modern contracts. (These rules are the golden rule, the literal approach and the purposive approach, which I will not discuss in detail here.) The three key takeaways here are ordinary meaning, intention and purpose. When you draft a contract and want to use “shall”, think carefully. Unless the use of the word satisfies these three tests, abandon the word and replace it with another word.
More reasons for never using “shall”
“Shall” is a chameleon. “Shall” has four meanings in the Macquarie Dictionary and five meanings in Black’s Law Dictionary. It can be used to impose an obligation but it can also be used for other purposes, for example, to express the simple future tense. “Shall” is also not a commonly used word. It is archaic. It is what Shakespeare and Dickens would have used. Black’s Law Dictionary pointed out that only one of the five meanings of “shall” is acceptable under strict standards of drafting – “shall” means “has a duty to”.
Indeed, many people do consider, at least in the traditional use of the word, that “shall” (and “shall not”) indicates obligation, and in comparison, “may” indicates discretion. But this is not always true, as you will see from the case below. And this is precisely why the word “shall” should not be used in modern contracts.
BW Gas AS v JAS Shipping Ltd  All ER (D) 134 (Feb) is a UK Court of Appeal (Civil Division) case. The case considered a bareboat sub-charter of a new vessel that required it to be built in accordance with a building contract. The court found that although the contract provided that the buyer “shall” supply particular items for installation, the contract had not been breached by failure to deliver the vessel with the items installed, as it had not been mandatory for the buyer to supply. Although this case is a UK case and can be limited to its particular circumstances, the confusion created as to whether or not “shall” imposed a mandatory requirement is a very good reason for never using that word.
How to draft a shall-less agreement
Use “must” to express an obligation because the meaning is clear and it is a commonly used word. In Australia, this is the rule invariably applied by judges, and is supported by the Government as well as legal commentators. Similarly, do not use “will”. This word can be used, and often is used, to express the simple future tense. If an alternative to “must” is really necessary, try using “agrees to” or “is required to”.
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