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. However, there are still some grey areas to consider.
For example, it is not clear from the passages in Evatt’s judgment in Henderson v Radio Corporation Pty Ltd as to the different types of misrepresentation which render a remedy in passing off. Would it be limited to misrepresentations, which might result in damage to the plaintiffs’ business or profession; or would it also propose a remedy in cases of misinterpretation, amounting to an appropriation of personality in the case where there was no injury to the plaintiffs in such a capacity?
Furthermore, could liability be based on misappropriation of such a property right; or is there still a need to show a misrepresentation, thereby deceiving the consumer and making them more comfused? Evatt CJ and Manning J seems to indicate the need for elaboration on the issue of misrepresentation, rather than a misappropriation of an independent property right. The vagueness has led some commentators to argue that the courts have developed a legal fiction that cannot be a reality.
In many instances, when establishing an action in the tort of passing off becomes difficult due to the vagueness in some of its elements, the Trade Practices Act is applied instead. Whilst the intention of the Trade Practices Act was not to secure goodwill in one’s personality, it is useful in an indirect manner as it protects individuals against misleading and deceptive conduct.