Passing Off

… five characteristics … must be present … to create a valid cause of action for passing off 1)

  1. a misrepresentation
  2. made by a trader in the course of trade,
  3. to prospective customers .. or ultimate consumers of goods supplied by him,
  4. which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and
  5. which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so.“
1) Lord Diplock in Erven Warnink Besloten Vennootschap v J Townend and Sons (Hull) Ltd (1979) AC 731 at 742, cited Twentieth Century Fox Film Corporation and Matt Groening Productions Inc v the South Australian Brewing Co Ltd and Lion Nathan Australia Pty Ltd [1996] FCA 1484