Case: Vieright Pty Ltd v Myer Stores Ltd (1995) 31 IPR 361
Outcome: considered
At the same page his Honour noted that attempts to produce a definition of the tort which is both succinct and comprehensive have had mixed success. Nonetheless, both Lockhart and Gummow JJ in that case referred with approval to the following passage from the speech of Lord Oliver of Aylmerton in Reckitt &amp; Colman Products Ltd v Borden Inc [1990] 1 WLR 491 at 499 in which his Lordship identified the elements that a plaintiff must prove in order to succeed: ... First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying 'get-up' (whether it consists simply of a brand name or a trade description, or the individual features of labelling and packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff. See also Vieright Pty Ltd v Myer Stores Ltd (1995) 31 IPR 361 at 369. 91 In Vieright Pty Ltd v Myer Stores Ltd each of the appellant and the respondent sold clothing under the trade mark "First". At 373 the Full Court observed: In the present kind of case, it will usually be the situation that if a passing off claim is established, it will be so by reason of a finding of a misrepresentation of the type discussed in the authorities. Such a misrepresentation will usually constitute a contravention of s 52, and possibly s 53 , of the Trade Practices Act . Conversely, if no misrepresentation is found, it will usually follow that the Trade Practices Act claim will also fail. 92 As mentioned above, the BBQ King restaurant was established under that name in about 1981. Since at least about 1985 the name "BBQ King" has been prominently displayed on a sign outside the restaurant. It has operated under that name in Goulburn Street continuously since that time. Since about 1989 the restaurant has been open from 10:00am to 2:00am seven days a week 365 days a year. It serves between 250 and 350 meals every day. It caters for individual customers through to large groups. Its clientele is drawn from the Sydney CBD, greater Sydney and visitors, including international visitors, to Sydney. A large proportion of its customers are English speaking. 93 The evidence discloses that since about 1986 the restaurant has used the following logo, albeit with some small variation in the presentation of the "duck on the plate" image, on its letterhead, facsimile transmission cover page, menus including take-away menus and business cards.