Crennan J
98.
An action for passing off protects any goodwill and reputation in product get-up[1]. In a passing off action in respect of get-up, a plaintiff must show not only goodwill and reputation in the product get-up, but also a representation by a defendant to the public leading to actual deception or the probability of deception, and actual damage or the likelihood of damage[2]. If the features used in product get-up are in common use in a particular trade, a plaintiff may have difficulty in a passing off action in proving the distinctiveness of the get-up[3]. A brand name used in association with product get-up is likely to be a feature upon which customers rely, especially if the get-up combines features in common use in the trade with a distinctive brand name[4]. "Distinctiveness" does not mean eye-catching – the test for distinctiveness is the function the get-up actually serves, rather than how well it is adapted to serve it[5]. It was not suggested by the plaintiffs that the brand names associated with their product get-up would play a negligible role in any action for passing off.
The "reality of proprietorship"[6] of the plaintiffs as registered owners of composite trade marks is that, used alone, albeit in the manner restricted by the Packaging Act, the brand names "Winfield", "Dunhill", "Camel" and "Old Holborn" are capable of discharging the core function of a trade mark – distinguishing the registered owner's goods from those of another, thereby attracting and maintaining goodwill. Sections 20(3) and 28(1), (2) and (3)(c) of the Packaging Act provide that a use of a brand name, as restricted by the Packaging Act, is to be treated as use of a trade mark, as registered, or as use of a trade mark, the subject of an application for registration. Whilst potential assignees and licensees of registered trade marks may value, even highly, the advertising function of a trade mark, or associated product get-up, an exclusive
- ↑ H P Bulmer Ltd v J Bollinger SA [1978] RPC 79; Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] AC 731; Reckitt & Colman Products Ltd v Borden Inc [1990] UKHL 12; [1990] RPC 341; Harrods Ltd v Harrodian School Ltd [1996] EWCA Civ 1315; [1996] RPC 697.
- ↑ Cadbury-Schweppes Pty Ltd v The Pub Squash Co Ltd [1981] RPC 429; Reckitt & Colman Products Ltd v Borden Inc [1990] UKHL 12; [1990] RPC 341 at 406 per Lord Oliver of Aylmerton.
- ↑ Wadlow, The Law of Passing-Off, 4th ed (2011) at 725–730 [8-132]–[8-140].
- ↑ Imperial Group plc v Philip Morris Ltd [1984] RPC 293; Reckitt & Colman Products Ltd v Borden Inc [1990] UKHL 12; [1990] RPC 341.
- ↑ Wadlow, The Law of Passing-Off, 4th ed (2011) at 733–734 [8-145].
- ↑ Banking Case [1948] HCA 7; (1948) 76 CLR 1 at 349 per Dixon J; Newcrest [1997] HCA 38; (1997) 190 CLR 513 at 595, 633 per Gummow J.
