Many will remember the press reports when singer Katy Perry tried to stop Australian fashion designer Katie Perry from using the Katie Perry brand for luxury loungewear. The singer argued that due to her fame and success, the clothing range could be mistakenly associated with the singer. Although the singer was unsuccessful (there were specific factors that made this case unlikely to succeed), using another party’s brand name (or one that is very similar) may well constitute misleading and deceptive conduct – it all turns on the specific circumstances.

Many businesses may feel at arm’s reach from these kinds of situations. But the potential to mislead can arise from various kinds of conduct. Two recent cases help illustrate the point.

In Bodum v DKSH Australia Pty Ltd [2011] FCAFC 98 the court held that a rival trader had engaged in misleading and deceptive conduct by copying the distinctive features of the shape of Bodum’s Chambord coffee plunger.

The DKSH product did not bear the Bodum name and was marketed under the Euroline name. However, the court held that consumers would be misled into thinking that the product was the famous Bodum Chambord plunger because:

•  the features and shape of the Bodum plunger had acquired a vast and enduring reputation akin to that of the famous Coca-Cola bottle, to the extent that consumers associated the features and shape of the plunger with Bodum;

•  the Euroline mark of the rival product appeared only on the packaging, but the product was displayed for sale out of the box and often away from the box; and

•  the absence of any label, tag, name or logo on the product itself (given the practices above) meant that the rival product was not differentiated from the Chambord plunger and gave the false impression of being a Chambord plunger.

This case illustrates the ability to deceive by omission, based on the shape of the actual product.

In a dispute between two print cartridge suppliers (Dynamic Supplies v Tonnex International Pty Ltd [2011] FCA 362), the Federal Court found that Tonnex had engaged in misleading or deceptive conduct by making various statements on its website, including “you are purchasing 100% genuine Australian HP products”.

None of the relevant products were made in Australia, but Tonnex argued that they were aptly described as “Australian products” because they came in special packaging labelled “Australia only”, indicating that the products were for sale only in this country.

Tonnex further argued that as most of its customers were business resellers rather than ultimate consumers, they would understand the “100% ... Australian” claim and would be very unlikely to be misled into thinking that these products were actually made in Australia.

The Court did not agree. It held that purchasers should not be taken to be striving for a meaning different to the ordinary meaning of the words. Nothing in the context gave purchasers a reason to think that the product was not made in Australia.

While it might seem obvious that a statement such as “100% ... Australian” would be misleading if products are not actually made in Australia, there can be grey areas surrounding where a product is actually made – particularly if the product includes components or ingredients sourced from elsewhere.  

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