Case: Hornsby Building Information Centre Pty Limited v Sydney Building Information Centre Ltd (1978) 140 CLR 216
Outcome: followed
But for passing off or a contravention of s 52 to occur the defendant must make a false representation that the defendant's goods are the plaintiff's or are associated in some way with the plaintiff. The focus of s 52 is on the misleading of others, rather than upon an injury to a competitor: Hornsby Building Information Centre Pty Limited v Sydney Building Information Centre Ltd (1978) 140 CLR 216 at 228 per Stephen J. 75 In cases of passing off where the wrongful appropriation of the reputation of the plaintiff or that of his goods is in question, a plaintiff who used descriptive words in his trade name would find out that quite small differences in a competitor's trade name would render the latter immune from action. The law recognises the possibility of blunders by members of the public when descriptive words are used by two traders as part of their respective trade names. But, Stephen J said the risk of confusion must be accepted because "... to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe": Hornsby Building Information Centre 140 CLR at 229. And, he said that similar principles applied to s 52 , because allowing that section to be used as an instrument for the creation of a monopoly of descriptive names "... would be to mock the manifest intent of the legislation": 140 CLR at 230. The principle is not limited to a name but applies to other descriptive material if it has not given a distinctive character to a product or business: Cadbury Schweppes [1980] 2 NSWLR at 858 [21] per Lord Scarman. I am of opinion that a similar principle applies to the use of a get-up in which the plaintiff has no proprietary interest or goodwill i.e. where he has not created a secondary meaning associating the plaintiff or his goods with the get-up. 108 There is no reason to conclude that Ricegrowers is entitled to a monopoly on colours and flow packs for the packaging of corn or rice cakes with the features of those on Real Foods' packaging complained of. Here, Real Foods adopted colours and printed flow pack packaging which were in common use in the savoury biscuits category. Just because Ricegrowers was first to use these in the corn cake and rice cake subcategories did not entitle it to a monopoly of their use. Real Foods took sufficient steps, in all the circumstances, to distinguish its flavoured "Corn Thins" from the three conflicting products of SunRice: cp: Campomar 202 CLR at 84 [99]; Parkdale Custom Built Furniture Pty Limited v Puxu Pty Limited [1982] HCA 44 ; (1981) 149 CLR 191 at 200 per Gibbs CJ; Office Cleaning 63 RPC at 43. The ordinary reasonable consumer was used to seeing the corn and rice cakes products of the parties displayed standing up in the shelves. The new packaging for the new "Corn Thins" was presented as part of the family or group of products distinct from the SunRice family or group. When one of the "Corn Thins" flavoured corn cakes varieties was placed within the SunRice product display, as is shown in some photographs in evidence, they look noticeably out of place on the shelves and in the wrong "family" or group. I am of opinion that the ordinary reasonable consumer would notice this and realise the products were not related, even if they wondered why the supermarket had displayed them in this way: Hornsby Building Information Centre 140 CLR at 229; Cadbury Schweppes [1980] 2 NSWLR at 858 [21].