Case: Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302
Outcome: followed
The tort of passing off is notoriously difficult to define. A Full Court of this Court in Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302 explained the history, meaning and current relevance of the tort. At 355.8 356.2, Gummow J said: In Reckitt &amp; Colman Products Ltd v Borden Inc [1990] UKHL 12 ; [1990] RPC 341 at 406, Lord Oliver of Aylmerton formulated the essential elements in a passing-off action without referring specifically to earlier authority. Now, Nourse LJ (in Consorzio del Prosciutto di Parma v Marks and Spencer plc [1991] RPC 351 at 368-369) has said that the formulations by Lord Diplock and Lord Fraser had not in his experience given the same degree of assistance in analysis and decision as "the classical trinity" of (1) reputation (2) misrepresentation and (3) damage. Nourse LJ regards what was said in the Borden case (supra) as signalling a "welcome return to the classical approach". It is neither necessary nor appropriate for us to comment upon these vicissitudes of the recent English case law. But it is to be observed that the law of passing off contains sufficient nooks and crannies to make it difficult to formulate any satisfactory definition in short form. However, "the classical trinity" does serve to emphasise three core concepts in this area of the law. This appeal is concerned with all of them, namely, the geographical requirements for a sufficient reputation, the nature of the interests damaged, and the significance of fraud in the making of the misrepresentation. 166 More recently, in Hansen Beverage Co v Bickfords (Australia) Pty Ltd [2008] FCAFC 181 , another Full Court of this Court said (at [34] to [37]): 34 In order to succeed in a passing off action, an applicant must establish, as one element of tort existing as at the date when the conduct commenced, that the applicant had the requisite reputation in the name or goods in the jurisdiction of the respondent and that there is a likelihood of deception among consumers or potential consumers resulting from the respondent's actions. An applicant must prove that there are, within the relevant jurisdiction, a substantial number of persons who were aware of the applicant's name or product and are possible consumers. It is necessary to show in a practical and business sense a sufficient reputation in the forum and this requires an evaluation of the size and distribution of the population of prospective consumers likely to be affected: see ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302 at 342, 343, 346 (per Lockhart J), and 380 (per French J). 35 The tort of passing off is designed to protect the property and goodwill of a business. It is only available where an applicant can show goodwill or reputation in relation to the name or get-up of his or her goods or services because they have become distinctive of his goods or services in a particular market. An applicant will succeed where he or she can show that a potential customer is likely to be misled into believing that the respondents' goods are goods of the applicant or are somehow associated with the applicant: see Cadbury-Schweppes Pty Limited v Pub Squash Co Pty Limited (1980) 32 ALR 387 at 393. 36 In Conagra 33 FCR at 381, in relation to a claim under the TPA, French J referred to the expression "a not insignificant number" of persons who would be potential customers as being an appropriate criterion. His Honour went on to observe that if the similarity complained of is "commercially irrelevant", having regard to the number of people who know of that similarity, then the name or get-up is not misleading or deceptive. 37 In considering the question of reputation, although s 52 of the TPA makes no reference to "reputation", decisions under that provision have referred to the need to prove a "significant" or "substantial" proportion of persons within the relevant market who would be likely to be misled: see 10th Cantanae Pty Ltd v Shoshana Pty Limited (1987) 79 ALR 299 at 301; National Exchange Pty Ltd v Australian Securities &amp; Investments Commission (2004) 61 IPR 420 at 440; cf .au Domain Administration Ltd v Domain Names Australia Pty Limited [2004] FCA 424 ; (2004) 207 ALR 521 at 529-530.