What is passing off in New South Wales Australia?
Passing off is a type of intellectual property violation that occurs when one person uses the reputation, likeness, or other unique characteristics of another person, business, or product to promote their own goods or services. In NSW, passing off is a common law tort that is regulated by the courts, rather than by specific legislation. To prove passing off in NSW, the plaintiff must show that:
- They have a reputation or goodwill in the relevant goods or services;
- The defendant has made a false representation that their goods or services are the same as or connected with those of the plaintiff; and
- The defendant’s false representation has caused or is likely to cause confusion or deception among the public.
If you can prove these elements, you may be entitled to an injunction to prevent the defendant from continuing the passing off, as well as damages for any financial loss that you have suffered as a result of the defendant’s actions.
Have I established all elements to claim passing off?
To establish a claim of passing off in New South Wales, the following elements must be established:
- Goodwill or reputation: The plaintiff must have an established reputation or goodwill in the goods or services they provide.
- False representation: The defendant must have made a false representation that their goods or services are the same as or connected with those of the plaintiff. This false representation can be made through words, actions, or any other means that would lead a person to believe that the defendant’s goods or services are those of the plaintiff.
- Confusion or deception: The false representation must have caused or be likely to cause confusion or deception among the public. This confusion or deception can occur in the mind of the consumer, or in the market more generally.
- Damage: The plaintiff must have suffered or be likely to suffer damage as a result of the defendant’s false representation. This damage can be financial, such as lost sales, or it can be damage to the plaintiff’s reputation or goodwill.
Do I have a passing off claim under the Australian Consumer Law (ACL)?
Passing off is also prohibited under the ACL, which is a federal law that applies across Australia. The ACL prohibits businesses from engaging in misleading or deceptive conduct, including passing off.
Under the ACL, a person engages in misleading or deceptive conduct if they make a representation that is likely to create an incorrect impression in the mind of a reasonable person that they are the same as or connected with your company or product, and that is likely to influence their decision to purchase the goods or services in question.
If a business engages in passing off in contravention of the ACL, they may be subject to enforcement action by the Australian Competition and Consumer Commission (ACCC) or by a private party, such as another business. This enforcement action can include fines, injunctions, and orders for compensation.
In addition to the provisions of the ACL, businesses may also be subject to other laws, such as trademark law, which provide further protection against passing off.
What remedies am I entitled to if I have successfully claimed passing off in court?
If you have a valid claim for passing off in New South Wales, you may be entitled to the following remedies:
- Injunctive relief: A court may issue an injunction to prevent the defendant from continuing the passing off. This can include ordering the defendant to stop using your business name, trademark, or other unique characteristics, or to make changes to their advertising or other marketing materials.
- Damages: You may be entitled to receive monetary compensation, known as damages, for any losses that you have suffered as a result of the defendant’s passing off. This can include compensation for lost sales, damage to your reputation, and any other costs you have incurred.
- Account of profits: In some cases, you may be able to recover the profits that the defendant has made as a result of the passing off. This remedy requires the court to calculate the amount of profit that the defendant has made, and then to order the defendant to pay that amount to you.
- Statutory penalties: If the defendant has engaged in passing off in contravention of the Australian Consumer Law, you may be able to recover statutory penalties from the defendant. These penalties are designed to deter businesses from engaging in illegal conduct, and can be substantial.
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