Case: Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181
Outcome: cited
Relevant principles in the context of claimed breach of s 52 , as explained by the Full Court in SAP Australia [1999] FCA 1821 ; 169 ALR 1 at 14, include the following: &#8226; Initial confusion is sufficient and it is not necessary for confusion to induce or be likely to induce a transaction. Conduct which misleads a customer so that, under some mistaken impression of a trader's connection or affiliation, he or she opens negotiations or invites approaches may be misleading or deceptive even if the true position emerges before the transaction is concluded. &#8226; However, each case depends on its own facts and conduct may not be misleading or deceptive or likely to mislead or deceive, notwithstanding that it may engender temporary and commercially irrelevant error (cf Knight v Beyond Properties Pty Ltd [2007] FCAFC 170 at [56] ; Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181 at [41] ). &#8226; Characterisation of conduct as "misleading or deceptive or likely to mislead or deceive" involves a judgment of a notional cause and effect relationship between the conduct and putative consumer's state of mind. 71 In addition to these principles, it is also clear that: &#8226; In order to determine whether there has been any contravention of s 52 it is necessary to determine whether or not the conduct complained of amounted to a representation which has or would be likely to lead to a misconception arising in the minds of that section of the public to whom the conduct has been directed: Astrazeneca Pty Ltd v GlaxoSmithKline Australia Pty Ltd [2006] FCAFC 22 at [34] . &#8226; Whether or not there is the requirement of some exclusive reputation as an element in the common law tort of passing off, there is no such requirement in relation to Pt V of the TPA. The question is not whether an applicant has shown a sufficient reputation in a particular get-up or name. The question is whether the use of the particular get-up or name by an alleged wrongdoer in relation to his product is likely to mislead or deceive persons familiar with the claimant's product to believe that the two products are associated, having regard to the state of knowledge of consumers in Australia of the claimant's product: Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Limited (2007) 159 FCR 359 at 419; Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181 at [39] . &#8226; Where the relevant conduct involves representations to the public at large or to a section thereof, such as prospective purchasers of a product the respondent markets or proposes to market, the issue is one of identifying the "ordinary" or "reasonable" members of that class of prospective purchasers: Campomar Sociedad, Limitada v Nike International Ltd [2000] HCA 12 ; [2000] 202 CLR 45 at 84-85. &#8226; It is necessary to isolate by some criterion a representative member of the class of prospective purchasers: Campomar [2000] HCA 12 ; 202 CLR 45 at 85. This excludes erroneous or fanciful assumptions: Campomar [2000] HCA 12 ; 202 CLR 45 at 86. &#8226; Where a transitory association between the names of two products in the mind of a member of the public is immediately dispelled upon a comparison of those products, this brief association will generally be of no significance and therefore will not give rise to misleading conduct or deception: Knight v Beyond Properties Pty Ltd [2007] FCAFC 170 at [53] . 76 To that extent I consider that any brief association between the two trade marks in the mind of a member of the public would generally be of no significance, and that a significant number of members of the general public, in fact or by inference, have not been misled or would likely not be misled by the first respondent's use of the trade mark "bing" for the purposes of s 52 TPA (cf Hansen [2008] FCAFC 181 at [46] - [48] ). 77 Accordingly, I consider that the applicant's claim against the first respondent for breach of s 52 TPA fails. 78 In para 15 of the Amended Statement of Claim, the applicant specifically pleaded that, by reason of the first respondent's conduct, the first respondent had contravened and/or threatened and intended to continue to contravene the provisions of s 53 TPA because the first respondent: &#8226; had represented and/or threatened to represent that its business is operated by or under the authority of the applicant whereas its business was not operated by or under the authority of the applicant; &#8226; had represented and/or threatened to represent that its business is operated under or with the sponsorship and/or approval of the applicant whereas its business is not operated with the sponsorship and/or approval of the applicant; &#8226; has represented and/or threatens to represent that the products offered for sale, sold and supplied by the first respondent are offered for sale, sold and supplied by or under the authority of the applicant, whereas such products are not offered for sale, sold, or supplied by or under the authority of the applicant; and &#8226; has represented and/or threatened to represent that the products offered for sale, sold or supplied by the first respondent are offered for sale, sold or supplied under or with the sponsorship and/or approval of the applicant whereas such products were not offered for sale, sold or supplied with the sponsorship or approval of the applicant.