Case: 10 th Cantanae Pty Ltd v Shoshana Pty Ltd (1987) 79 ALR 299
Outcome: referred to
53 provides as follows: False or misleading representations A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services: (a) falsely represent that goods are of a particular standard, quality, value, grade, composition, style or model or have had a particular history or particular previous use; (aa) falsely represent that services are of a particular standard, quality, value or grade; (b) falsely represent that goods are new; (bb) falsely represent that a particular person has agreed to acquire goods or services; (c) represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have; (d) represent that the corporation has a sponsorship, approval or affiliation it does not have; (e) make a false or misleading representation with respect to the price of goods or services; (ea) make a false or misleading representation concerning the availability of facilities for the repair of goods or of spare parts for goods; (eb) make a false or misleading representation concerning the place of origin of goods; (f) make a false or misleading representation concerning the need for any goods or services; or (g) make a false or misleading representation concerning the existence, exclusion or effect of any condition, warranty, guarantee, right or remedy. Reliance in the present proceeding is placed upon s 53(a) , (aa), (c) and (d). There is no reason to give these provisions anything other than their normal meaning. In McDonald's Systems of Australia Pty Ltd v McWilliams Wines Pty Ltd (1979) 28 ALR 236 at 247, Franki J considered the meaning of the terms " sponsorship " and " approval ". His Honour there concluded as to the meaning of these two terms as follows: In Weitmann v Katies Ltd (1977) 29 FLR 336 at 344, I had occasion to consider the meaning of the word "sponsorship" in s 53(c) and I said: "The word 'sponsorship' in connection with trade marks or trade names seems to envisage something more along the lines of a certification mark." I see no reason to change this view and I consider that the word "sponsorship" in s 53(c) should be construed in a way appropriate to the construction of such a word in a section creating a criminal offence. ... The next question is whether there was a representation by the respondent that its wine had "approval" which it did not have. ... The Oxford Dictionary defines "approval" as "the action of approving; sanctioning, approbation". The most appropriate meanings of "approve" in the Oxford Dictionary are, in my opinion, "to confirm authoritatively; to sanction; to pronounce to be good; commend". ... It has, however, been questioned whether these definitions place " too narrow a meaning upon these terms, attached as they are to the verb 'represent'... ": 10 th Cantanae Pty Ltd v Shoshana Pty Ltd (1987) 79 ALR 299 at 325 per Gummow J. Nor should any constrained meaning be placed upon the term " affiliation " as used in s 53(d). In Mark Foys [2000] FCA 1626 , 104 FCR 61 , conduct was held to fall within s 53(c) and (d) in circumstances where a television sales company pursued a marketing strategy of associating itself with the defunct Mark Foys department store. See also: 10 th Cantanae (1987) 79 ALR 299. A breach of s 53(c) was made out in Australian Competition and Consumer Commission v Chen [2003] FCA 897 , 132 FCR 309 in circumstances where a person operating an internet web site falsely represented that the site had some affiliation with or association with the Sydney Opera House. See also Australian Competition and Consumer Commission v Wizard Mortgage Corporation Limited [2002] FCA 1317 , (2002) ATPR 41-903. The essence of the action in passing off, it may thus be noted, is the protection of a plaintiff's goodwill attaching to a business or commercial venture. In Campomar [2000] HCA 12 at [108] , 202 CLR at 88, Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ thus observed that "... passing-off, at least so far as concerns equitable relief, protects against injury to the goodwill built up by the activities of the plaintiff ". It is not concerned with an invasion of privacy: 10 th Cantanae (1987) 79 ALR at 317 per Gummow J. The tort includes "... circumstances involving the deceptive or confusing use of names, descriptive terms or other indicia to persuade purchasers or customers to believe that goods or services have an association, quality or endorsement which belongs or would belong to goods or services of, or associated with, another or others ... ": Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) [1984] HCA 73 ; (1984) 156 CLR 414 at 445 per Deane J. The tort is not confined to cases where loss consists in the diversion of trade: Turner v General Motors (Australia) Pty Ltd [1929] HCA 22 ; (1929) 42 CLR 352 at 368 per Dixon J. The tort extends to those cases where a plaintiff and defendant are not engaged in a " common field of activity " and where a defendant is not in direct competition with a plaintiff: Totalizator Agency Board v Turf News Pty Ltd [1967] VR 605 at 608 to 609 per Smith J; 10 th Cantanae (1987) 79 ALR at 324 per Gummow J.