Critical analysis

The concept of a business, as mentioned before was interpreted in its widest sense as including professions and callings. Hogan v Koala Dundee Pty Ltd case In this particular case the courts have taken an essential approach in Hogan v Koala Dundee Pty. 24 The defendants used images extracted from the plaintiffs’ film ‘Crocodile Dundee’ without obtaining any authorization or getting a license and particularly, they used the name of the movie ‘Dundee’ on their products. According to Pincus J, it was ‘possible to bring a passing off action in respect of an image, including a name, unconnected with any business at all’.

This was an innovative and broad proposition. However, Pincus J’s view is contrary to previous Australian authorities’, as it suggested that liability need not be based on misrepresentation, and it would suffice if there was a misappropriation of commercial reputation. This approach has not been followed in subsequent Australian cases. In Pacific Dunlop Ltd v Hogan the Full Federal Court maintained the need to illustrate a misrepresentation and damage to goodwill, rather than the broader notion of misappropriation explicated in Hogan v Koala Dundee.

The requirement of misrepresentation was consequently maintained in Talmax Pty Ltd v Telstra Corp Ltd and others involved the production and selling of t-shirts printed with a design owned by the rock group INXS. Passing off was established, as the designs had the tendency to mislead purchasers who would think that the t-shirts had been approved by the rock group. This is despite the fact that the market stalls selling the t-shirts stated that the products were ‘genuine bootleg’. This is because it was not sufficient to prevent a misrepresentation, which misled many purchasers who thought that they were buying goods, endorsed by INXS.

Finally, the third and last elements that the aggrieved athletes must build a good case for passing off in stating that his goodwill was damaged. This is the fifth of Lord Diplock’s criteria in Erven Warnick, which states that the defendant’s misrepresentation must cause actual damage to his business or goodwill, or the probability of damage. In the classic action for passing off, the defendant would have misrepresented that his goods or his business were the plaintiff’s goods or business,30 resulting in a diversion of trade from the plaintiff to the defendant, which would amount to damage done to the plaintiff.

3- Critical analysis on the effectiveness and limitations of the law of passing off Trademarking the name of celebrities is an emerging trend. There is an evenue for redress of this passing off, more importantly in the area of character merchandising. Broadly, the Australian courts have done very well in the area of being able to secure the rights of celebrities in the action of passing off, quite well.