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".