Relevant legal principles
306 There is a substantial body of evidence to the effect that interpreting and copying fashion styles and fashion looks is endemic in the fashion and footwear industries and is therefore justifiable. Such a proposition depends upon whether a right is infringed or a statutory provision is contravened by such copying. In the absence of copyright, design or trade mark protection there is no infringement of any right by such interpretation and copying unless the copy product can be said to be passed off as and for the genuine product or that consumers are misled and deceived into believing that the copy product is a genuine product or as emanating from the trade source of the genuine product, or has the sponsorship of, or an association with, the manufacturer of the genuine product. The tenor of some of the cross‑examination of the respondents' witnesses was that in principle there was something wrong or illegitimate about copying somebody else's product. Whatever view one may have about the moral or social propriety of such copying that is not a matter for the Court. The matter was put succinctly by Lord Scarman speaking for the Privy Council in Cadbury‑Schweppes Pty Ltd v The Pub Squash Co Pty Ltd (1980) 32 ALR 387 at 393:
"But competition must remain free: and competition is safeguarded by the necessity for the plaintiff to prove that he has built up an 'intangible property right' in the advertised descriptions of his product: or, in other words, that he has succeeded by such methods in giving his product a distinctive character accepted by the market. A defendant, however, does no wrong by entering a market created by another and there competing with its creator. The line may be difficult to draw: but, unless it is drawn, competition will be stilled. The test applied by Powell J in the instant case was to inquire whether the consuming public was confused or misled by the get‑up, the formula or the advertising of the respondent's product into thinking that it was the appellants' product. And he held on the facts that the public was not deceived. Their Lordships do not think that his approach in law (save in one respect, as will later appear), to the central problem of the case can be faulted."
307 The issue for the Court is whether there has been an infringement of a right given by law or the contravention of any statutory provision. Accordingly, it forms no part of my task to be critical of persons for copying products unless they have infringed such a right or brought about such a contravention.
308 The key ingredient of a cause of action for passing off or contravention of ss 52, 53 or 55 of the Act is that there be a misrepresentation: Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177, per Deane and Fitzgerald JJ at 202; Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 FCR 302 per Lockhart J at 308, 340. The applicants submitted that the relevant misrepresentation required to establish passing off, or a contravention of ss 52, 53 and 55 of the Act, is found in the taking and use of the distinctive get‑up of the Z welt footwear. As a matter of principle there is no doubt that if the get‑up or trade dress of a product is distinctive of a product and its trade source then passing off or a contravention of, can be established even if the infringing product bears a brand or label different from the product being misrepresented. In Reckitt & Colman Products (supra) a misrepresentation was established by the use of the same get‑up as was used by the respondents notwithstanding that the infringing product had a label with a different brand name attached to it. The relevant get‑up was a plastic container of lemon juice made in the shape, colour and size of a natural lemon. It had been marketed for many years by the plaintiff and had dominated the market for lemon juice. Although the trial judge found that there was no difficulty in a careful shopper concluding that the infringing product was not the Reckitt & Colman Jif product because the shopper could read the label, he found on the evidence that many shoppers would buy the defendant's product believing it to be the Jif product.
309 The reason for this conclusion was the trial judge's findings extracted by Lord Oliver at 408, inter alia, that:
"The crucial point of reference for a shopper who wishes to purchase a Jif squeezy lemon is the lemon shape itself. Virtually no, if any, attention is paid to the label which that lemon bears. This is easily understood, for the shopper has no need to read the label, or pay any attention to it, in order to obtain the goods that she requires. Moreover, the evidence is that most people, when they get the lemon home, take off the label, which performs no useful function and is easily detachable, so that it is not consciously thereafter any part of the purchased product."
And that (at 408 - 409):
"… when the consumer goes forth to purchase another such lemon, the starting point of the reference is the unadorned lemon, and not the lemon plus label."
And that (at 409):
"Now, paying proper attention to all these matters, and placing myself in the position of the shopper in relation to whom all these matters apply as part of his or her shopping knowledge and habits, I really have no hesitation in coming to the conclusion that there is bound to be confusion in the shopper's mind in relation to all three marks of the defendants' lemons. None of them is really sufficiently distinctive, nor are the labels such as to impinge sufficiently forcefully upon the shopper's attention, as to call immediately to mind that the item is not a Jif lemon: it would be supposed by a very large number of shoppers - probably, on any attempted arithmetical calculation running into millions - that each of the defendants' lemons was no more than an immaterial variant of the Jif lemon."
And that (at 409):
"the embossing of the word Jif on the true Jif lemons, is far from being easily legible, and certainly would not be seen by a glance at the shelf on which they were displayed, as any true surface graphics can be seen."
Among the matters which influenced the trial judge in reaching his conclusions were the casual nature of the purchase and the fact that a substantial number of purchasers paid little or no attention to the label.
310 Lord Oliver, who delivered the leading judgment in the House of Lords (and with whom Lords Bridge, Brandon and Goff agreed) restated the relevant principles applicable to the tort of passing off in the following terms at 406:
"The law of passing off can be summarised in one short general proposition - no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying 'get‑up' (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get‑up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the band name. Thirdly, he must demonstrate that he suffers or, in a quia timet action that he is likely to suffer, damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff."
Lord Jauncey addressed the issue of copying get‑up in the following terms (at 418):
"Get‑up is the badge of the plaintiff's goodwill, that which associates the goods with the plaintiff in the mind of the public. Any monopoly which a plaintiff may enjoy in get‑up will only extend to those parts which are capricious and will not embrace ordinary matters which are in common use.
However, although the common law will protect goodwill against misrepresentation by recognising a monopoly in a particular get‑up, it will not recognise a monopoly in the article itself. Thus A can compete with B by copying his goods provided that he does not do so in such a way as to suggest that his goods are those of B. Lawful competition will not be restricted by the common law."
311 Although their Lordships expressed surprise as to the trial judge's findings of fact that shoppers would purchase the defendant's product believing it to be the Jif product they found them unassailable. As Lord Oliver said (at 414):
"The trial judge here has found as a fact that the natural size squeeze pack in the form of a lemon has become so associated with Jif lemon juice that the introduction of the appellants' juice in any of the proposed get‑ups will be bound to result in many housewives purchasing that juice in the belief that they are obtaining Jif juice. I cannot interpret that as anything other than a finding that the plastic lemon‑shaped container has acquired, as it were, a secondary significance. It indicates not merely lemon juice but specifically Jif lemon juice."
312 What was critical in Reckitt & Colman Products (supra) was the extent to which shoppers identified the get‑up of the Jif product with a trade source and paid little attention to the label. Lord Oliver said at 416:
"In the instant case, side‑by‑side visual comparison does not in fact take place. Moreover the trial judge was satisfied of the fact that a substantial part of the purchasing public requires specifically Jif lemon juice, associates it with the lemon‑shape, lemon‑size container which is the dominant characteristic of the get‑up and pays little or no attention to the label."
313 Put shortly, in that case the label or brand on the product had little impact on, or significance for, the purchasers. I am satisfied that the situation is quite different in relation to the applicants' and the respondents' footwear where the article to be purchased is examined, handled and tried on the foot before purchase, where branding is a matter of importance and significance to potential purchasers and where the brand is observed on the sock and sole of the footwear. Footwear is not purchased casually and in the words of Jacob J in Hodgkinson & Corby Ltd v Wards Mobility Services Ltd [1995] FSR 169 at 180:
"They are far removed from the 'penny packets' of the Dolly Blue [in William Edge & Sons Limited v William Niccolls & Sons Limited [1911] AC 693] or the cheap plastic lemons of Jif".
Not only does the branding or labelling on the footwear have a greater significance for, and impact upon, consumers and potential purchasers, it also is used as an integral part of the marking and display of the footwear.
314 It seems to me that once a potential purchaser or consumer was confronted with look‑alike footwear with a brand name other than Dr Martens and a price point substantially less than the price at which genuine Dr Martens footwear is sold, the consumer would form the view that this was not a genuine Dr Martens product. It was apparent from the evidence that the market at which Dr Martens footwear and the look‑alike or imitation footwear was targeted was brand conscious, price conscious and fashion conscious. That market was also well attuned to the existence of look‑alikes and imitations. In my view Reckitt & Colman Products (supra) is distinguishable from the facts before me. In these proceedings I am not concerned with supermarket or casual purchases of a relatively cheap product. The decision to purchase the Jif lemon would probably take less than sixty seconds. That is not the situation with footwear which usually if not inevitably has to be handled, examined for fit, comfort, look and fashion content and tried on. Further, persons interested in buying a Dr Martens product will usually be aware of the name Dr Martens or at least will be aware of a relatively expensive product made in England.
315 Reckitt & Colman Products (supra) emphasises that it is the manner in which the relevant products are presented to the public which dictates the approach to determining the effect or likely effect on consumers. At 415 Lord Oliver noted the question asked by Lord Kingsdown in Leather Cloth Co Ltd v The American Leather Cloth Company Ltd (1865) 11 HLC 523, 539 "how far the defendants' trade mark bears such a resemblance to that of the plaintiffs, as to be calculated to deceive in cautious purchasers" and said:
"It is also the question to be asked in this case. It has, however, to be asked in every case against the background of the type of market in which the goods are sold, the manner in which they are sold and the habits and characteristics of purchasers in that market. The law of passing off does not rest solely upon the deceit of those whom it is difficult to deceive."
316 In Reckitt & Colman Products (supra) the trial judge had found that a substantial part of the purchasing public paid little or no attention to the label on Jif lemon juice. The evidence before me shows that the target market for Dr Martens footwear and Dr Martens style footwear was at the relevant times and is brand conscious, price conscious, discriminating as to fashion and to fashion trends and alerted to the and recognition of look‑alikes. The evidence also shows that potential purchasers become aware of brands on potential purchases and are aware of brands generally.
317 In this area the law is concerned with a tension between competing principles, namely the Court's concern in relation to "any attempt to extend or perpetuate a monopoly" (Reckitt & Colman Products (supra) at 416; on the one hand and the principle on the other hand that "no man is entitled to steal another's trade by deceit" (Reckitt & Colman Products (supra) at 416).
318 The applicants' case was put on the basis of passing off, misleading and deceptive conduct under s 52 of the Act, false attribution of sponsorship or approval under s 53 of the Act and misleading conduct as to the characteristics of the footwear under s 55 of the Act. (Trade mark infringement is raised against Bata and Windsor Smith.) Although the two causes of action seek to protect different interests, passing off being concerned with protection of reputation and goodwill: Conagra Inc v McCain Foods (Aus) Pty Ltd (supra) at 231, and ss 52, 53 and 55 being concerned with protection of the public interest the authorities on passing off provide "guidance by analogy as to the type of conduct which would be likely to mislead or deceive the public": R & C Products Pty Limited v SC Johnson & Sons Pty Limited (1993) 42 FCR 188, 192 per Davies J. In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1981) 149 CLR 191 Brennan J said at 219:
"In my opinion, this is a case where common law principles are relevant to a true understanding of the scope and operation of s 52. The relevant principles prescribe the protection to which a manufacturer is entitled against the marketing of copies of his goods and the correlative (albeit incidental) protection of consumers who might be led by the appearance of a copy into believing that it is made by that manufacturer".
319 However, it must be remembered that in a passing off case, unlike a case brought under the Act, it is necessary to establish that the relevant misrepresentation is calculated to injure the business or goodwill of the complaining party and that such business and goodwill has been damaged or that there is a probability of such damage.
320 It is not necessary to establish such injury or damage in a case brought under ss 52, 53 or 55 of the Act. The causes of action under the Act are made out by establishing the relevant misrepresentation and its likelihood to mislead or deceive. Deane and Fitzgerald JJ put the matter succinctly in Taco Company of Australia Inc v Taco Bell Pty Ltd (supra) at 199:
"In our view, it is sufficient to enliven s 52 that the conduct, in the circumstances, answers the statutory description, that is to say, that it is misleading or deceptive or is likely to mislead or deceive. It is unnecessary to go further and establish that any actual or potential consumer has taken or is likely to take any positive step in consequence of the misleading or deception. That is not to say that evidence of actual misleading or deception at the point of sale and of steps taken in consequence thereof is not likely to be both relevant and important on the question whether the relevant conduct in fact answers the statutory description and as to the relief, if any, which should be granted."
321 Although Lord Oliver said in Reckitt & Colman Products (supra) at 406 that the law of passing off:
"[c]an be summarised in one short general proposition - no man may pass off his goods as those of another",
it has been said that:
"…the law of passing off contains sufficient nooks and crannies to make it difficult to formulate any satisfactory definition in short form."
Conagra Inc v McCain Foods (Aust) Pty Ltd (supra) at 355 per Gummow J, (cf Carty, Dilution and Passing off: Cause for Concern (1996) 112 LQR 632). As noted earlier, Lord Oliver acknowledged in Reckitt & Colman Products (supra) at 406 that it was necessary to establish three elements for a passing off action; goodwill or reputation attached to the goods or services, misrepresentation and damage.
322 Lord Oliver also referred to the five essential characteristics of a passing off action identified by Lord Diplock in Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] AC 731 at 742:
"… (1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services 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."
This statement has been accepted in Australia: Moorgate Tobacco Co Limited v Philip Morris Limited (No 2) (1984) 156 CLR 414, 443 - 444 per Deane J; Conagra Inc v McCain Foods (Aust) Pty Ltd (supra) at 308 - 310.
323 The relevant date for determining whether the cause of action for passing off or contravention of the Act has occurred is the date of the commencement of the conduct and activities of which complaint is made: Cadbury‑Schweppes Pty Ltd v The Pub Squash Co Pty Ltd (supra) at 397.
324 In Equity Access Pty Ltd v Westpac Banking Corporation (1989) 16 IPR 431 at 440 ‑ 441 Hill J set out a number of propositions which apply to s 52 cases:
"1. For conduct to be misleading or deceptive the conduct must convey in all the circumstances of the case a misrepresentation: Taco Bell at 202. In the present case the misrepresentation on the part of the respondents is said to be that the financial product advertised and marketed by each of them is the product of the applicant or that there is some business relationship between the applicant and each of the respondents or that the applicant has endorsed the respective product of the respondents.
2. There will, however, be no contravention of s 52(1) of the Act unless error or misconception results from the conduct of the corporation and not from other circumstances for which the corporation is not responsible: Puxu per Gibbs CJ at (CLR) 6 and per Mason J at (CLR) 15; Global Sportsman Pty Ltd v Mirror Newspapers Ltd (1984) 55 ALR 25 at 34.
3. Conduct will be likely to mislead or deceive if there is a 'real or not remote chance or possibility' of misleading or deception regardless of whether it is less or more than 50 per cent: Global Sportsman at 34. The question of whether conduct is misleading or deceptive or likely to mislead or deceive is an objective question which the court must determine for itself. Hence evidence that persons in the relevant class have been misled will, although admissible, not be determinative. In some cases however such evidence will be very persuasive: Puxu per Gibbs CJ at (CLR) 198‑9.
4. Conduct of a corporation causing mere confusion or uncertainty in the minds of the public in the sense that they may be caused to wonder whether two products may have come from the same source is not necessarily coextensive with misleading or deceptive conduct: Puxu at (CLR) 100; Bridge Stockbrokers Ltd v Bridges (1984) 5 IPR 81; 57 ALR 401 at 413 per Lockhart J. Since actual deception need not be shown the court must consider whether a reasonably significant number of potential purchasers would be likely to be misled or deceived: Weitmann v Katies Ltd (1977) 29 FLR 336 at 343. The test in passing off cases is usually expressed as being whether a 'substantial number of persons likely to become purchasers … are liable to be deceived by the defendant's use of the name'. On the other hand it is not necessary to show that all, or substantially all, persons in the market associate the name with the plaintiff's goods, if this can be shown of a substantial proportion of persons who are probably purchasers of the goods of the kind in question' (per Wilberforce J, as he then was, in Norman Kark Publications Ltd v Odhams Press Ltd [1962] RPC 163 at 168 and see Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147 at 175‑6; 10th Cantanae Pty Ltd v Shoshana Pty Ltd (1987) 10 IPR 289; 79 ALR 299 at 315 per Gummow J).
5. In a case such as the present the applicant must establish that it has acquired the relevant reputation in the name, that is to say that the name had become distinctive of the applicant's business in a particular country or geographical area: Sheraton Corporation of America v Sheraton Motels Ltd [1964] RPC 202; BM Auto Sales Pty Ltd v Budget Rent A Car System Pty Ltd (1976) 12 ALR 363. However, at least in some circumstances, very slight activities may be found to be sufficient to establish that a name has become distinctive of a person's business in a particular country: Miki Shoko Co Ltd v Merv Brown Pty Ltd (1987) ATPR 40‑858.
6. Section 52 is not confined to conduct which is intended to mislead or deceive: Puxu per Gibbs CJ at (CLR) 197 and a corporation which acts honestly and reasonably may none the less engage in conduct that is likely to mislead or deceive: Yorke v Lucas (1985) 61 ALR 307 at 309."
325 In determining whether a misrepresentation has been made, it is necessary to determine the effect of the relevant conduct on persons of average intelligence and capability. They do not have to be particularly intelligent or well informed but at the same time the test is not to be applied by reference to persons who are stupid, careless or indifferent to the issue. In Taco Company of Australia Inc v Taco Bell Pty Ltd (supra) Deane and Fitzgerald JJ said at 202 ‑ 203:
"First, it is necessary to identify the relevant section (or sections) of the public (which may be the public at large) by reference to whom the question of whether conduct is, or is likely to be, misleading or deceptive falls to be tested (Weitmann v Katies Ltd (1977) 29 FLR 336, per Franki J at 339‑40, cited with approval by Bowen CJ and Franki J in Brock v Terrace Times Pty Ltd (1982) 40 ALR 97 at 99; [1982] ATPR 40‑267 at 43,412).
Second, once the relevant section of the public is established, the matter is to be considered by reference to all who come within it 'including the astute and the gullible, the intelligent and the not so intelligent, the well educated as well as the poorly educated, men and women of various ages pursuing a variety of vocations": Puxu Pty Ltd v Parkdale Custom Built Furniture (1980) 31 ALR 73; per Lockhart J at 93: see also World Series Cricket v Parish, supra, per Brennan J (16 ALR at 203).
Thirdly, evidence that some person has in fact formed an erroneous conclusion is admissible and may be persuasive but is not essential. Such evidence does not itself conclusively establish that conduct is misleading or deceptive or likely to mislead or deceive. The court must determine that question for itself. The test is objective (see generally, Annand & Thompson Pty Ltd v Trade Practices Commission (1979) 25 ALR 91, per Franki J at 102; Sterling v Trade Practices Commission (1981) 35 ALR 59, per Franki J (with whom Northrop J agreed) at 66 and per Keely J at 69; Snoid v Handley (1981) 38 ALR 383, per the court (Bowen CJ, Northrop and Morling JJ); and Brock v Terrace Times, supra, per Bowen CJ and Franki J).
Finally, it is necessary to inquire why proven misconception has arisen: Hornsby Building Information Centre v Sydney Building Information Centre (18 ALR at 647; 140 CLR at 228). The fundamental importance of this principle is that it is only by this investigation that the evidence of those who are shown to have been led into error can be evaluated and it can be determined whether they are confused because of misleading or deceptive conduct on the part of the respondent."
(See also Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (supra) at 198 ‑ 199 per Gibbs CJ.)
326 It is also necessary that a significant or substantial number of persons are likely to be deceived or misled by the relevant activity or conduct: Conagra Inc v McCain Foods (Aust) Pty Ltd (supra) at 346 per Lockhart J, at 380 per French J; Pacific Dunlop Ltd v Hogan (1989) 23 FCR 553 at 581; Siddons Pty Ltd v The Stanley Works Pty Ltd (1991) 29 FCR 14 at 20.
327 Although it is not necessary to establish an intention to misrepresent, pass off, mislead or deceive, the applicants submitted that the intention of the respondents to adopt the get‑up of the Z welt footwear is relevant to the issue of whether there is in fact a misrepresentation. Authority supports this proposition. In Australian Woollen Mills Ltd v FS Walton and Co Ltd (1937) 58 CLR 641 Dixon and McTiernan JJ said at 657:
"The rule that if a mark or get‑up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive."
328 In Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd (1946) 63 RPC 39 Lord Simonds said at 42:
"Confusion innocently caused will yet be restrained. But if the intention to deceive is found, it will be readily inferred that deception will result. Who knows better than the trader the mysteries of his trade?"
329 In Hoffman‑La Roche & Co AG v DDSA Pharmaceuticals Ltd [1969] FSR 410, Harman LJ said at 419:
"Now I myself never received from the defendants a satisfactory answer to the plain question why do they wish to market their goods in green and black? I can only answer that they wish to do so in order to attract to themselves some part of the plaintiffs' goodwill and trade on their reputation and in fact to represent to the public that their goods are the goods of the plaintiffs. That, in my judgment, is the classic case of passing off. … I do think that the defendants, by putting it up in this form, would be trying to filch some part of the plaintiffs reputation, and that, in my judgment, they are not entitled to do. …"
330 Similar statements have been made in the context of s 52 cases: Telmak Teleproducts (Australia) Pty Ltd v Coles Myer Ltd (1989) 15 IPR 362 per Sheppard J at 373.
331 In Conagra Inc v McCain Foods (Aust) Pty Ltd (supra) Lockhart J said at 345:
"Evidence of fraud is still tendered in passing off cases because evidence that the defendant had a fraudulent intent may assist in establishing the requisite misrepresentation, as the court 'will not be astute to find the defendant has failed in his nefarious design': Midland Counties Dairy Ltd v Midland Dairies Ltd (1948) 65 RPC 429 at 435 … But deliberate copying of the plaintiff's goods does not always evidence an intention to deceive; it may indicate nothing more than realisation that the plaintiff has a useful idea which the defendant can turn to his own advantage, though not intending to pass off his goods as those of the plaintiff". (emphasis added)
(cf Cadbury‑Schweppes Pty Ltd v The Pub Squash Co Pty Ltd (supra) at 397).
332 However, as I have found earlier, each of the respondents set out to adopt the get‑up and trade dress or a substantial or significant part of the get‑up and trade dress of the Z welt footwear but also with the intention of branding it as their own by using their own brand. It was only Windsor Smith who used "The ORIGINAL" on the instep of the sole of its MC, Hot and Fire shoes and a rectangle cross and word device on the MC shoe and on the Hot shoe between April and June/July 1991.
333 The respondents were unapologetic for copying the look of the Z welt footwear and assert that their branding of the footwear ensures that there is no misrepresentation as to trade source. The respondents, however, denied that they were appropriating part of the applicants' goodwill and reputation and denied any intention to deceive. They acknowledged some of them begrudgingly, that they had sought to copy a "look" and said they were entitled to do so, so long as they made it clear that they were not representing their footwear as footwear emanating from the applicants but were in fact representing that the footwear comes from a different source. This they did, they said, by applying and displaying their own brand names on the footwear.
334 The deliberate copying of the get‑up of the product of another trader, of itself, does not establish for the purposes of a passing off cause of action a case of fraud, that is a case of an intention to induce consumers to believe that if they purchase the product, they are purchasing a product made by that other trader or they are purchasing a product in circumstances where there is some relationship or association between the manufacturer of the product and the other trade or between their respective products. In Conagra Inc v McCain Foods (Aust) Pty Ltd (supra) Lockhart J said at 352:
"Merely to imitate the name of another trader or his product or his get‑up does not establish a case of fraud. That appears clearly from the Pub Squash case".
At 374 Gummow J said:
"However, whilst I would not disturb the finding of the primary judge as to fraud, I should add that, like Lockhart J, my impression from the evidence is that there is much to be said for the view that the respondent acted as it did, not to filch the appellant's market or prospective market in Australia, but because it was impressed by the success of the appellants product in the United States and thought that a similar product was likely to succeed here. That would not amount to fraud in the required sense. Deliberate copying does not necessarily indicate fraud. A notable example is provided by Cadbury Schweppes Pty Ltd v The Pub Squash Co Pty Ltd (1980) 32 ALR 387; [1981] RPC 429 at 493‑4."
335 In Cadbury‑Schweppes Pty Ltd v The Pub Squash Co Ltd (supra) Lord Scarman, delivering the opinion of the Privy Council said at 396 - 397:
"Where an intention to deceive is found it is not difficult for the court to infer that the intention has been, or in all probability will be, effective: see Slazenger & Sons v Feltham & Co (2) (1889) 6 RPC 531, per Findley LJ at 538. But in dealing with the issue of deception the learned judge directed himself correctly and made the comment, which is also good law, that ' … the court must be on its guard against finding fraud merely because there has been an imitation of another's goods, get up, method of trading or trading style (see, for example, Gova Ltd v Gala of London Ltd (1952) 69 RPC 188)'. [emphasis in original]
After a very careful consideration of the judgment as a whole, their Lordships do not think that in the arrangement of the subject‑matter of his judgment the judge allowed himself to overlook the importance, subject to safeguards, of a defendant's intention when deciding the issue of deception.
Once it is accepted that the judge was not unmindful of the respondent's deliberate purpose (as he found) to take advantage of the appellants' efforts to develop Solo, the finding of 'no deception' can be seen to be very weighty: for he has reached it notwithstanding his view of the respondent's purpose. But it is also necessary to bear in mind the nature of the purpose found by the judge. He found that the respondent did sufficiently distinguish its goods from those of the appellants. The intention was not to pass off the respondent's goods as those of the appellants but to take advantage of the market developed by the advertising campaign for Solo. Unless it can be shown that in so doing the respondent infringed 'the [plaintiffs'] intangible property rights' in the goodwill attaching to their product, there is no tort: for such infringement is the foundation of the tort: see Stephen J in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Pty Ltd (supra)."
Thus, the mere copying of a design or get‑up is not sufficient to constitute passing off or a contravention of ss 52, 53 or 55 of the Act so long as the manufacturer copying has sufficiently distinguished its products and made it clear that they are not the goods of the manufacturer whose design or get‑up is copied (see also Adidas KG v O'Neill & Co Ltd [1983] FSR 76).
336 It is in this context that it is necessary to have regard to the analysis in Puxu (supra). At 196 Gibbs CJ said:
"Further, it is difficult to escape from the conclusion that the appellant deliberately copied the design and appearance of the respondent's chairs. However, it does not follow that the appellant had any intention to mislead or deceive. One manufacturer may copy the product of another, because that product has proved successful and with the intention of taking advantage of an available market for a product of that kind, but with no intention of passing off his own product as the product of the original manufacturer. The fact that the appellant sold its products to retailers, and labelled them before delivery, and the absence of any evidence of any improper agreement between the appellant and any retailer, support the conclusion that the appellant had no intent to mislead or deceive."
337 At 199 ‑ 200 Gibbs CJ said:
"Speaking generally, the sale by one manufacturer of goods which closely resemble those of another manufacturer is not a breach of s. 52 if the goods are properly labelled. There are hundreds of ordinary articles of consumption which, although made by different manufacturers and of different quality, closely resemble one another. In some cases this is because the design of a particular article has traditionally, or over a considerable period of time, been accepted as the most suitable for the purpose which the article serves. In some cases indeed no other design would be practicable. In other cases, although the article in question is the product of the invention of a person who is currently trading, the suitability of the design or appearance of the article is such that a market has become established which other manufacturers endeavour to satisfy, as they are entitled to do if no property exists in the design or appearance of the article. In all of these cases, the normal and reasonable way to distinguish one product from another is by marks, brands or labels. If an article is properly labelled so as to show the name of the manufacturer or the source of the article its close resemblance to another article will not mislead an ordinary reasonable member of the public."
Mason J said at 209 - 210:
"Conduct does not breach s. 52(1) merely because members of the public would be caused to wonder whether it might not be the case that two products come from the same source. Lockhart J. was of the view that it was enough that the ordinary person entertained a reasonable doubt, relying on the construction given to 'likely to deceive' in s. 114 of the Trade Marks Act 1905‑1948 by the Court in Southern Cross Refrigerating Co. v Toowoomba Foundry Pty. Ltd. and on appeal. In McWilliam's Smithers, Northrop and Fisher JJ. held that it was inappropriate to apply the approach given to s. 114 of the Trade Marks Act to s. 52 of the Act and the respondent does not seek to support the reasoning of Lockhart J. on this point.
There are sound reasons, some of which are elucidated in McWilliam's, for not applying unchanged the construction given to s. 114 of the Trade Marks Act.
The Trade Marks Act is concerned with deception or confusion to the public as to the source of goods. The Trade Practices Act is concerned with deception of the public as consumers of goods or services. The function of a trade mark is to identify the source of goods; the purpose of s. 52 is to prohibit misleading or deceptive conduct which will affect the recognition or identification of goods. Registration of a mark confers rights of a proprietary nature. The applicant for a trade mark bears the onus of establishing that use of his mark is not likely to deceive or cause confusion. Under s. 52 the onus is on the plaintiff to show that the conduct is likely to mislead or deceive. Therefore conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s. 52.
Here, I am prepared to infer that the very close resemblance of the appellant's and respondent's furniture could lead a person who had previously seen the respondent's furniture either displayed in a shop or advertised in the media mistakenly think on seeing the appellant's 'Rawhide' suite that it was a 'Contour' suite. It seems unlikely that an ordinary purchaser would notice the very slight differences in the appearances of the suites, especially if the prospective purchaser had not earlier inspected the respondent's "Contour' suite in detail."
Brennan J said at 225 ‑ 226:
"A later manufacturer who does no more than exercise his freedom to manufacture and sell goods made in accordance with a design in the public domain does not mislead or deceive; and if a consumer has an erroneous preconceived belief that the first manufacturer has a monopoly, a false assumption by the consumer as to the source of the later manufacturer's goods is self‑induced. …
Of course, where identical or similar goods are on the market, it may take very little evidence of conduct additional to the mere manufacture and sale of the goods to establish a case under s. 52. The degree of risk of confusion is material to an appreciation of the conduct of a trader in marking or getting up his goods for sale in competition with the goods of another trader. In the present case, however, where Parkdale labelled the 'Rawhide' suite in accordance with the practice of the trade and the label clearly distinguished that suite from the 'Contour' suite, there was no misleading or deceptive get‑up. If customers mistook the 'Rawhide' suite for the 'Contour' suite the mistake was not induced by Parkdale's conduct. It was not misleading or deceptive conduct merely to manufacture and sell a lounge suite similar to the Contour suite - or, for that matter, a suite identical with the Contour suite. Something more was needed to show conduct inducing a mistaken belief that the 'Rawhide' suite was manufactured by Puxu, but only additional evidence, the label, showed conduct which was calculated to correct any confusion as to source."
These observations are of particular relevance and application in the present proceedings.
338 The applicants sought to distinguish Puxu (supra) on the basis that the respondents have not manufactured the same design as such but rather have picked on the capricious additions to the footwear thereby inevitably identifying an association with the trade source of the genuine Z welt footwear. The applicants rightly pointed out that Puxu (supra)was not a case involving a contest as to get‑up but was rather a case involving a contest as to the design of the furniture. As Brennan J said at 223:
"The present case has not been contested as a case of deceptive get‑up; it is a case of substantial similarity in the goods themselves".
339 The distinction between capricious items of get‑up and the functional or design aspects of a product was recognised by Lord Jauncey in Reckitt v Colman Products (supra) where his Lordship said at 418:
"Get‑up is the badge of the plaintiff's goodwill, that which associates the goods with the plaintiff in the mind of the public. Any monopoly which a plaintiff may enjoy in get‑up will only extend to those parts which are capricious and will not embrace ordinary matters which are in common use."
340 I consider that the principles in Puxu (supra) are nevertheless applicable to, and cover, the situation where rather than copying the design and construction of a clearly branded article and branding the copied design with a different brand, the trade dress or get‑up is copied or imitated but with a distinctive and clear brand or label. In such a situation so long as the article is clearly branded and labelled there is no contravention of ss 52, 53 or 55 of the Act or passing off so long as it can be said that potential purchasers are, in the context of the relevant products, brand aware and brand conscious and so long as it is clear (unlike the "Jif" case) that the brand and labelling of the copy is placed fairly and squarely before the potential purchaser before purchase so that he/she is made well aware of the brand. The context of the relevant products in the present case is one where the Z welt footwear is always branded "Dr Martens", the relevant market is brand conscious, fashion conscious and price conscious and the look‑alike or imitation products (with the exception of the Windsor Smith products) are clearly branded with the respondents' name or brand.
341 The applicants relied upon a number of decisions in which the labelling of a product has been insufficient to prevent passing off, but those decisions are distinguishable on their facts. I have already considered Reckitt & Colman Products (supra) and I will turn shortly to Paragon Shoes Pty Ltd v Paragini Distributions (NSW) Pty Ltd (1988) 13 IPR 323. In Lever v Goodwin (1887) 36 ChD 1 the Court was concerned with tablets of soap in similar packaging but with different names. An injunction was granted on the basis of passing off. Cotton LJ said at 6:
"It is very true that Goodwin's name appears as the maker or the wholesale seller of this particular soap, but it is quite contrary to experience, and quite contrary to the evidence, to suppose that every one, when buying a packet of tabular soap, would look to the name for the purpose of determining whether what he has bought is that which he has been accustomed to buy in a very similar packet."
Lindley LJ said at 8:
"Then if you look at the evidence, it comes out clearly and strongly that the Defendants' soap is often bought under the belief that it is the Plaintiffs' soap, and it is of no use to point out the differences, which of course may be perceived when attention is drawn to them."
342 The evidence before this Court is that potential purchasers are brand conscious and look at the brand of footwear before deciding on a purchase. Also there is no evidence of actual mistaken purchases.
343 In Weingarten Bros v Charles Bayer & Co (1905) 22 RPC 341, the offending party copied more than the product, women's corsets; it copied the distinctive form of type or "scroll" used by the plaintiff on the name of its product which was the same name as the plaintiff used albeit with the addition of its well‑known initials. The majority of the House of Lords found passing off on the basis of the distinctive form of type of scroll used by the offending party on the name of the corsets. Save for Windsor Smith the respondents' branding is quite different from the Dr Martens branding.
344 In John Haig and Company Limited v Forth Blending Company Limited (1953) 70 RPC 259 an injunction was granted restraining the supply of whisky in the shape of the "Dimple" bottle. However the Court was influenced by the fact that because of the position of the bottle on the bar, the label would not be obvious to all the customers in the bar and the way in which the bottle was used. The branding of the respondents' footwear is such as to bring the brand fairly and squarely before a potential purchaser or consumer.
345 In Tavener Rutledge Ltd v Specters Ltd [1959] RPC 83 an injunction was granted restraining the use of a sweets tin of a similar design to the plaintiff's sweets tin, albeit with the defendant's name clearly placed on it. However, in such a case the product is not given the degree of consideration and attention as is given to footwear before it is purchased. The purchase of a tin of sweets, like the purchase of a "Jif" lemon, will usually occur within a very short time frame unlike the purchase of footwear, particularly where the potential purchaser is brand conscious.
346 In Coca‑Cola Company v AG Barr & Company Ltd [1961] RPC 387 no interim interdict was granted as the respondent discontinued the use of the offending bottle. Although Lord Walker thought a prima facie case had been made out that the use of the respondent's bottle resulted in it being passed off as and for the petitioner's product the issue was never ruled on. It was also significant that neither bottle bore any label.
347 In Adidas Sportschuhfabriken Adi Dassler KG v Harry Walt & Co (Pty) Ltd (1976) (1) SA 531 passing off was found in respect of footwear bearing four lateral stripes displayed in a similar way to the Adidas footwear displaying three lateral stripes. The Court was influenced by the fact that a potential purchaser, who did not know or remember the name Adidas, but who was influenced by the identifying get‑up would treat the visual impact of the shoe as indicative of origin and purchase on the strength of that impact. The Court thought that it was not probable that a potential purchaser would regard a different name as indicative of a different origin rather than as designating a particular model in the line of shoes marketed by Adidas. In short the Court did not consider that the defendant's brand name was of any consequence in respect of a potential purchaser's intention to acquire an Adidas product. In the four cases before this Court the evidence is quite different. Potential purchasers are brand conscious and the name of a brand is influential in the purchasing decision.
348 The applicants sought to distinguish Puxu (supra) and like cases where the copying of a design was not restrained on the basis that the Z welt footwear is not, and never has been, an "ordinary article of consumption". It was said that the ordinary article of consumption is the underlying footwear item, either a boot or a shoe, but that once it has the distinctive features applied to it, it ceases to be an ordinary article of consumption, it becomes proprietary to the applicants and is not susceptible to being copied (albeit it with different branding) as in Puxu (supra). However I consider the applicants' reliance on the non‑ordinary article of consumption characterisation of the Z welt footwear not to be well founded. All the applicants were saying is that a trader may be able to copy a functional design so long as the copy is clearly branded, but a trader cannot copy the get‑up or trade dress of a product, that is to say a trader cannot copy the capricious additions to the functional design. That proposition so baldly stated, is not, in my opinion, a correct statement of principle. Rather, the principle is that a trader does not simply by using a particular trade dress or get‑up acquire the right to prevent another trader from using the same or similar get‑up on its products. That right only arises where the trade dress or get‑up has become so associated by the public with the first trader's products as to be distinctive of the products of that particular trader. At the same time one cannot ignore the branding of, or the labelling on, the product as such distinctiveness of trade dress or get‑up as exists, may only exist in conjunction or association with the particular brand or labelling applied to the particular product.
349 Put shortly, there will be cases where initially a trade dress or get‑up is thought to be distinctive of a particular product and trade source but, having regard to the particular market, and the manner in which the product is examined and considered at the time of purchase the trade dress and get‑up cannot be divorced from, or considered separately or in isolation from, the branding, marking and labelling on the genuine product and on the imitation product. The four cases before the Court are, in my opinion, such cases.
350 The determination of this issue is ultimately a question of fact and earlier cases must be looked at in the context of the facts before the previous courts. For example in William Edge & Sons Limited v William Niccolls & Sons Limited [1911] AC 693 the respondent was said to have passed off its laundry blue tints as the products of the appellant notwithstanding that the respondent's products bore a label with its name. However, the appellant's "Dolly" blue tints bore no name and the market at which the products were aimed was not brand conscious. Lord Gorell said at 704 - 705:
"The goods in question are made up in penny packets, and are chiefly purchased over the counter by washerwomen, cottagers, and other persons in a humble station of life.
…
The poorer classes, who buy this class of goods, do not seem to distinguish the goods by the label, but by the general appearance which the articles present."
This approach is not apposite to the market in which the applicants and the respondents' footwear were found between 1991 and the commencement of the four proceedings.
351 A fact situation similar to that before the Court can be found in Paragon Shoes Pty Ltd v Paragini Distributors (NSW) Pty Ltd (supra) where the respondent was found to have contravened s 52 and s 53(d) of the Act by copying the designs of shoes manufactured by the applicants and using the brand name "Paragini" on the shoes. However it was not simply the copying which brought about the contravention. At 337 - 338 Woodward J said:
"In considering whether the facts outlined above constitute a contravention of ss 52 or 53 of the Act, it must first be conceded that mere copying, even precise copying, of shoe styles is not unlawful. The designs have no protection under relevant patent, copyright or designs legislation. It is also clear that the adapting of overseas designs to Australian requirements is central to the Australian shoe manufacturing industry. This will quite often amount to close copying.
Because Australian designs are themselves derivative, and because they appear on the scene later, it is much less common to find those designs being adapted or copied by other manufacturers. But this is likely to occur if some local design is seen as being, or likely to be, particularly successful. When it does occur, it is not unlawful unless there is something in the advertising or promotion of the copied shoes which misleads potential purchasers into thinking they are buying the shoes of the designer, not the copier."
352 Woodward J distinguished Puxu (supra) from the case before him (339 - 340):
"… for the simple reason that the trade name 'Paragini', far from providing a clear distinction from 'Paragon', is misleadingly similar. This use of a similar name was 'conduct additional to the mere manufacture and sale of the goods'. The 'ordinary, reasonable member of the public' was likely to be misled by the combination of close copying and name similarity."
It was the combination of the similar name and the copying which influenced his Honour.
353 A more recent situation involving two products similar in design is found in Philips Electronics NV v Remington Products Australia Pty Limited (1997) 39 IPR 283, where Lehane J found no serious question to be tried on issues of contraventions of s 52 and s 53 of the Act and passing off although he granted interlocutory injunctive relief in relation to the issue of trade mark infringement. Philips had marketed a triple‑headed rotary shaver for many years and its product was until June 1997 the only rotary headed shaver sold in Australia. In June 1997 Remington started to import and sell a triple headed rotary shaver branded as Remington. Philips claimed that the triangular head had for many years become distinctive of its electric shavers and was a distinctive badge of origin and that its power was such that the name "Remington" would be overlooked. It was said that consumers would think that the Remington came from the same source as the Philips or that there was a relationship, possibly a licence between Philips and Remington. It was also said that Remington had intended to get as close as possible to the Philips design and intentional copying can reflect an intention to mislead which assists in a finding of deception. Lehane J said at 39,922:
"To accept those arguments, however, would in my view be to deny the proposition for which Puxu most clearly stands. It may be accepted that three shaving heads in the equilateral triangular configuration were, until June 1997, unique in Australia to Philips. But unless Philips is entitled to a monopoly in that configuration by virtue of particular intellectual property rights (for example registered trade marks or registered designs) then another trader may copy it provided that it is clearly indicated that the copied product is not a Philips but a product of the other trader. Where, as in this case, each of the manufactures concerned has a well known brand name, I cannot see why it should be thought necessary (as counsel for Philips suggested, and as apparently has been done in some advertising in the United States) to add 'this machine is not a Philips'. (It might be said that, if one were to take some of Philips' arguments literally, even that might not help). Nor do I think that Philips is helped by the answers to the Remington questionnaire: the questions, though not directed precisely to issues relevant to s 52 (or passing off), certainly elicited answers which demonstrated a good deal of confusion as to the brands of electric shavers of various sorts. Perhaps the answers demonstrate that people may, when they seek one of the Remington shavers complained of, conclude (wrongly) that it comes from the same source as shavers which they have previously bought. Unless, however, s 52 prevents Remington Australia from selling a shaver, clearly marked with the Remington brand, which looks very similar - even identical - to a Philips shaver (and Puxu rules out such a proposition) then such confusion is of no significance."
354 The applicants submitted that the respondents' footwear has the inherent potential to mislead the public and they relied in support of this proposition on Levi Strauss & Co v Wingate Marketing Pty Limited (1993) 43 FCR 344 at 372 (appeal allowed in part but not disturbed on this point on appeal (1994) 49 FCR 89). They also submitted that the respondents' footwear has a "badge of fraud", referring to Cadbury Limited v Ulmer GmbH [1988] FSR 385 at 406ff. These cases are not precisely in point and in any event can be distinguished on their facts. Levi Strauss was concerned with the sale of second‑hand Levi Jeans bearing the trade mark of the manufacturer. Although the jeans also bore the second‑hand seller's mark Lockhart J found that consumers were inevitably drawn at the same time to both marks. Any inherent potential to deceive or badge of fraud is dissipated and eliminated by clear branding and labelling. In Cadbury Limited v Ulmer GmbH (supra) it was recognised (at 405) that :
"It has long been well settled, on the authority of the court of Appeal in J.B. Williams Co. v H. Bronnley & Co. Ltd (1909) 26 RPC., 765 (see especially per Fletcher Moulton LJ at page 773, line 45 to page 774, line 3), followed by the Court of Appeal in Terrapin Limited v Ariston Buildings Limited [1964] FSR 218 (see especially at page 224 and in Benchairs Limited v Chair Centre Limited [1974] RPC 429 (see especially the passage at pages 435‑436) that there must be something more than mere similarity of the goods themselves to amount to passing off".
355 These appellations do not add anything substantive to the application of the principles to which I have referred because it is still necessary to determine whether there has been a misrepresentation having regard to all the circumstances surrounding the respondents' footwear, in particular the branding on the footwear and its price structure.
356 The applicants submitted that a case directly in point was the South African Appeal Court decision in Weber‑Stephen Products Co v Alrite Engineering (Pty) Ltd (1992) (2) SA 489. The appellant manufactured a "kettle type" barbecue known as a Weber One Touch Barbecue Grill which had been imported into South Africa since the late 1970s. Since 1986 the respondent made and sold a virtually identical product called the Mirage Braai Oven. The appellant obtained an interdict restraining the respondent from passing off its barbecue grill as a Weber barbecue grill without clearly distinguishing it. The respondent then attached to its grills a notice stating that:
"This MIRAGE braai oven is an all South African product by ALRITE and has NO CONNECTION WITHthe"WeberOneTouchBarbecueGrill'of WEBER‑STEPHENS CO of America".
It was not disputed that the reputation of the Weber unit lay in its shape and not in its name. The appellant maintained that the notice was insufficient to distinguish the two products and brought proceedings for breach of the interdict. The Appeal Court held that the notice was insufficient and ambiguous because potential purchasers, on seeing the grill with the notice and knowing that the product with the reputation had the relevant shape, would remain confused because the notice whilst alerting them to the fact of two unconnected sources having the same shape would not enable them to know which source had the reputation. The identity of shape of the two products remained a source of likely confusion. However in that case the brand name of the Weber unit did not loom large in the reputation of the product unlike the present proceedings where the brand name has been promoted and where potential purchasers and consumers frequently refer to the Z welt footwear as "Docs" or "Doc Martens" when seeking to purchase them and where potential purchasers and consumers are brand conscious.
357 The applicants contended that there was more than just a similarity between the Z welt footwear and the respondents' footwear as they said that the distinctive features were seen as identifying the trade source of genuine Dr Martens footwear. But as I observed earlier the existence of the Dr Martens brand and the associated markings cannot be excluded, nor can the respondents' branding be excluded when considering whether a representation, and a misrepresentation at that, is conveyed by the presentation of the distinctive features, or most of them, in the trade dress and get‑up of the respondents' footwear.