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.  
 

comments powered by Disqus

More Articles

Putting talent to the test

Putting talent to the test

For many of us coming second is inconceivable, whether its in business or sport. And that was the attitude Australian design consultancy, Design Resource, took into an international competition to win over a long-established client.

Share

Celebrate light

Although in the last few years we 
have assisted in an acceleration of the 
binomial design+art (just think of the success of fairs such as Design Miami/Basel, or of the growth of limited-editions design business – almost a contradiction in terms), the two disciplines have been going hand in hand for decades.

Rest
Connecting up at the congress

Connecting up at the congress

Held in late October last year, Connecting’07 was an incredibly frenetic and fruitful gathering of industrial designers from around the globe. The overall aim of the organisers, the International Council of Societies of Industrial Design (ICSID) and the Industrial Designers Society of America (IDSA) to connect people, ideas and to inspire, was achieved well beyond expectations.

News, Share, Work
The right to light

The right to light

Most of us take electricity for granted. Just a flick of a switch and the power is immediate.

Share