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Passing Off & Australian Consumer Law

The Australian Consumer Law (Competition and Consumer Act 2010) came into force across Australia on 1 January 2011 and has replaced the old Trade Practices Act. It has amalgamated various sources of state and federal consumer laws into one federal act. It contains fundamental consumer protections including:

• a general ban on misleading and deceptive conduct in trade or commerce
• a general ban on unconscionable conduct in trade or commerce
• a provision that makes unfair contract terms in consumer contracts void.
  

The Australian Consumer Law is often relied upon as a potential cause of action against others who infringe intellectual property rights. For example, a competitor who uses a registered trade mark can be sued for misleading and deceptive conduct because they are potentially misleading the public into thinking there is an affiliation between the competitor and the owner of the trade mark. For more information, see our trade mark infringement, patent infringement and design infringement sections.

Passing off

Passing off is a common law action that is often used to enforce trade mark rights. A person who builds up a reputation in connection with the use of a particular mark will have rights to prevent another person ‘passing off’ goods or services as being those of the owner of the mark. There are three elements that must be proven to establish passing off in court:

• you must establish some reputation or goodwill in your goods or service;
• there must be a misrepresentation by your competitor or other party, whether intentional or not, which leads or is likely to lead the public to believe that the goods or services offered by them are yours; and
• you must show that their conduct has caused actual damage or threatened damage to your reputation or goodwill.

See our trade mark infringement page for more information.