Case: Natural Waters of Viti Limited v Dayals (Fiji) Artesian Waters Limited (2007) 71 IPR 571
Outcome: cited
The evidence necessary or sufficient to establish reputation to found a case for passing off and contravention of the TPA will depend upon various factors (see eg Natural Waters of Viti Limited v Dayals (Fiji) Artesian Waters Limited (2007) 71 IPR 571 at [58]-[59]). Reputation may be inferred from a high volume of sales and extensive advertising, without any other direct evidence (see in a different context, Kenny J in McCormick &amp; Company Inc v McCormick [2000] FCA 1335 ; (2000) 51 IPR 102 at [86] - [88] . In this proceeding, there are no sales or direct advertising or promotion of Hansen's product in Australia. Rather, the evidence relied upon is that of exposure to persons in Australia through the marketing strategy adopted by Hansen to reach its target demographic primarily in other countries. 79 No expert evidence concerning the reputation of Hansen's product in Australia, nor any survey evidence as to the reputation in and public recognition of the Hansen product in Australia, was sought to be led by any party, although such evidence would be potentially admissible: see Natural Waters (2007) 71 IPR at [30]. 80 As I have said, reliance has been placed by Hansen upon a strategy 'to lay a foundation' in Australia (for instance) before the Hansen product is launched. Whilst the young male adult is accepted as the target market or the main potential customer, the initial focus of the strategy is upon those who are involved in or watch extreme sports, which sports have an international focus and appeal. No direct evidence has been led as to the number of persons who fall within the potential extreme sports target customers, nor as to the number of persons who fall within the potential young male adult target customers, although there is some indication on the evidence tendered by Bickfords that there were some 1.01 million males in Australia aged between 18 and 24 over the relevant period. The Court has been asked not only to accept that the strategy of targeting extreme sports has been successful but, more importantly, has extended to the potential young male adult customers that are the potential target market through the technique of 'word of mouth' marketing described previously. I am not persuaded on the evidence that over the relevant period the foundation laid has reached the level of establishing the required reputation in the Hansen mark in Australia. 81 In this proceeding, I have taken into account not only the number of references to the get-up of Hansen's product, but also the context in which they appear, so as to evaluate properly the evidence presented and the effect it may have on the potential customers targeted, namely young male adults. Where, as in this proceeding, the get-up is striking and distinct, a reputation may be more readily and quickly obtained, but the Court cannot assume this has occurred in a market where the product has not been sold or directly advertised. It may be that in these circumstances potential customers will not necessarily associate any get-up, packaging, or design with the Hansen product. It will all depend upon the extent of the customers' own interests (say in a particular extreme sport) and his or her own previous exposure to the product.