26/08/2009

If a competitor is using products or branding that are deceptively similar to your products or branding you may have various causes of action including;

 

1.         Infringement of a registered Trade Mark (if you have one);

2.         Tort of “Passing Off”;

3.         Contravention of sections 52 and/or 53 of the Trade Practices Act 1974 (Cth) and corresponding Fair Trading Act 1987 (NSW) equivalents; and

4.         Breach of Confidentiality

 

1.      Infringement of Trade Mark registration

 

Trade Marks are registered with IP Australia to protect a product’s branding and specific name in order to build a reputation and goodwill.  The infringement of a trade mark occurs where:

 

(a)       the registered trade mark is being used without the registered owner’s authorisation; or

(b)       where a person uses a sign that is substantially identical or deceptively similar to the registered trade mark.

 

In order for the owner of the trade mark to prove that the mark is being infringed, the owner must show that there is a possibility that the members of the target audience may be deceived or confused by the use of the same or similar names or products.

 

2.      Passing Off

 

The tort of Passing Off is a claim that a person is misappropriating your reputation or goodwill by using deceptively similar products, names or branding. 

 

Passing Off will occur where a person makes a misrepresentation about their goods that suggests some connection with another person’s goods or business.  For example, where party A represents:

 

(i)         that A’s goods are those manufactured or sold by B;

(ii)        that its goods share some important quality with those of B;

(iii)       that there is some business connection between A and B; or

(iv)      that B approves of A’s goods.

 

3.      Breach of sections 52 & 53 of the Trade Practices Act

 

Sections 52 and 53 of the Trade Practices Act 1974 (Cth) are claims that party B has engaged in conduct that is misleading or deceptive or a misrepresentation about party B’s goods being associated with or having the approval of party A.

 

The factors for making these claims are similar (but not identical) to the grounds for an infringement of the trade mark and the tort of passing off.  That is, the first party would need to show that party B’s products are likely to cause confusion and may deceive a potential customer as to an association between party B and party A.

 

4.      Breach of Confidentiality

 

A claim of a breach of confidentiality is where party A provides information that is confidential in nature to party B on the provision that it be kept confidential and that party B then misuses that information for its own gain and/or to the detriment of party A.

 

Generally speaking, if you believe your products, names or branding are being misused by a competitor you can seek to enforce your rights through the Courts including seeking an injunction to prevent the continued misuse and a claim for damages for economic losses suffered as a result of the misuse. 

If you have any questions in regard to possible claims of infringement of trade marks, passing off or misleading conduct, please contact TOWNSENDS BUSINESS & CORPORATE LAWYERS on (02) 8296 6222.