The relevant legal principles
398 Let me first say something concerning the principles relevant to asserted contraventions of ss 18 and 29 of the ACL. I should say as a preliminary observation that it is accepted that the promotion and sale of the New Certan wine by Kreglinger and PBV is conduct in trade or commerce for the purposes of the ACL.
399 In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, Gibbs CJ stated the general approach in the following terms (at 199 and 200):
… 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 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…
400 In Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (2023) 408 ALR 195, the High Court recently set out the well-established principles for determining a breach of s 18 of the ACL (at [80] to [83]). Similar principles apply in the context of claims under s 29 of the ACL, as was said in Self Care at [84]. But of course I am applying these concepts in a factual setting involving a dispute between traders. Let me elaborate on some of the key themes.
401 The question whether conduct has a tendency to lead a person into error is an objective question of fact to be determined on the basis of the conduct of the respondent as a whole viewed in the context of all relevant surrounding facts and circumstances. These circumstances include the strength of the applicant's reputation, and the extent of distribution of its products, the strength of the respondent's reputation, and the extent to which the respondent has undertaken any advertising of its product, the nature and extent of the differences between the products, including whether the products are directly competing, the circumstances in which the products are offered to the public, and whether the respondent has copied the applicant's product or has intentionally adopted prominent features and characteristics of the applicant's product (Verrocchi v Direct Chemist Outlet Pty Ltd (2016) 247 FCR 570 at [61] to [72] per Nicholas, Murphy and Beach JJ).
402 The conduct is tested as against the ordinary or reasonable member of the public or relevant section of the public to whom the conduct is directed (Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45 at [102] and [103]).
403 The principles relevant to the classification of the relevant person or class of persons for the purpose of s 18 of the ACL were summarised in Self Care as follows (at [82] and [83]):
The third and fourth steps require the court to characterise, as an objective matter, the conduct viewed as a whole and its notional effects, judged by reference to its context, on the state of mind of the relevant person or class of persons. That context includes the immediate context - relevantly, all the words in the document or other communication and the manner in which those words are conveyed, not just a word or phrase in isolation - and the broader context of the relevant surrounding facts and circumstances…
Where the conduct was directed to the public or part of the public, the third and fourth steps must be undertaken by reference to the effect or likely effect of the conduct on the ordinary and reasonable members of the relevant class of persons. The relevant class of persons may be defined according to the nature of the conduct, by geographical distribution, age or some other common attribute, habit or interest. It is necessary to isolate an ordinary and reasonable "representative member" (or members) of that class, to objectively attribute characteristics and knowledge to that hypothetical person (or persons), and to consider the effect or likely effect of the conduct on their state of mind. This hypothetical construct "avoids using the very ignorant or the very knowledgeable to assess effect or likely effect; it also avoids using those credited with habitual caution or exceptional carelessness; it also avoids considering the assumptions of persons which are extreme or fanciful". The construct allows for a range of reasonable reactions to the conduct by the ordinary and reasonable member (or members) of the class.
[footnotes omitted]
404 Conduct which merely causes confusion or uncertainty in the sense that members of the public might have cause to wonder whether the two products might have come from the same source is not misleading and deceptive conduct. The question is whether a consumer is likely to be misled or deceived.
405 There must be a logical causal connection between the conduct and alleged error. However, not every case involving a logical connection between conduct and alleged error will result in the conduct being regarded as misleading or deceptive for the purposes of the ACL. Even if, strictly speaking, a causal connection exists between conduct and error, where the error is based upon an erroneous assumption derived from, but not logically justified by, the conduct, the conduct will not ordinarily be treated as misleading or deceptive.
406 In Campomar it was observed at [105]:
Nevertheless, in an assessment of the reactions or likely reactions of the "ordinary" or "reasonable" members of the class of prospective purchasers of a mass-marketed product for general use, such as athletic sportswear or perfumery products, the court may well decline to regard as controlling the application of s 52 those assumptions by persons whose reactions are extreme or fanciful. For example, the evidence of one witness in the present case, a pharmacist, was that he assumed that "Australian brand name laws would have restricted anybody else from putting the NIKE name on a product other than that endorsed by the [Nike sportswear company]". Further, the assumption made by this witness extended to the marketing of pet food and toilet cleaner. Such assumptions were not only erroneous but extreme and fanciful. They would not be attributed to the "ordinary" or "reasonable" members of the classes of prospective purchasers of pet food and toilet cleaners. The initial question which must be determined is whether the misconceptions, or deceptions, alleged to arise or to be likely to arise are properly to be attributed to the ordinary or reasonable members of the classes of prospective purchasers.
407 Let me linger on Campomar for the moment and the debate concerning the "not insignificant number" formulation. Let me also set out my starting point in Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd (2016) 118 IPR 239 (at [270]):
[I]n determining whether a contravention of s 18 has occurred, the focus of the inquiry is on whether a not insignificant number within the class have been misled or deceived or are likely to have been misled or deceived by the respondent's conduct. There has been some debate about the meaning of "a not insignificant number". The Campomar formulation looks at the issue in a normative sense. The reactions of the hypothetical individual within the class are considered. The hypothetical individual is a reasonable or ordinary member of the class. Does satisfying the Campomar formulation satisfy the "not insignificant number" requirement? I am inclined to the view that if, applying the Campomar test, reasonable members of the class would be likely to be misled, then such a finding carries with it that a significant proportion of the class would be likely to be misled. But if I am wrong and that a finding of a "not insignificant number" of members of the class being likely to be misled is an additional requirement that needs to be satisfied, then I would make that finding in the present case. For a discussion of these issues, see Greenwood J's analysis in Peter Bodum A/S v DKSH Australia Pty Ltd (ACN 005 059 307) (2011) 280 ALR 639; 92 IPR 222; [2011] FCAFC 98 at [206]-[210] and National Exchange Pty Ltd v Australian Securities and Investments Commission (2004) 61 IPR 420; 49 ACSR 369; [2004] FCAFC 90 at [70] and [71] per Jacobson and Bennett JJ.
408 Now Wigney, O'Bryan and Jackson JJ in their dicta in Australian Competition and Consumer Commission v TPG Internet Pty Ltd (2020) 381 ALR 507 at [23] and [24] criticised the "not insignificant number" formulation including my own use thereof, whether as an alternative or an addition. They said that such a test is "at best, superfluous to the principles stated by the High Court in Puxu, Campomar and Google Inc". And they said that such a test is "at worst, an erroneous gloss on the statutory provision". They concluded (at [24]):
Consistently with our view that the "significant number" test is at best superfluous and at worst an erroneous and distracting gloss, we consider it appropriate to approach the ACCC's arguments on the basis of the principles stated by the High Court in Puxu, Campomar and Google Inc and to ignore the "significant number" test. Nevertheless, we note that our conclusion would not change even if we were to apply the "significant number" test.
409 But as they said, "[n]o substantive argument was directed to the correctness of that test by the ACCC and our decision in this appeal does not turn upon it" (at [23]).
410 How should one proceed in circumstances where there are at least three binding Full Court authorities prior to TPG, and importantly after Campomar, that perhaps justify applying such a test? Such Full Court authority prior to TPG did not accept the suggestion that Campomar displaced such a test. Three examples will suffice.
411 In National Exchange Pty Ltd v Australian Securities and Investments Commission (2004) 49 ACSR 369, Jacobson and Bennett JJ said (at [67] to [71]):
Mr Karkar submitted that the primary judge erred in failing to consider whether a "significant proportion" of shareholders would have been likely to have been misled. He relied on the use of those words by Wilcox J in 10th Cantanae Pty Ltd v Shoshana Pty Ltd (1988) 79 ALR 299 (10th Cantanae) at 302. Mr Karkar also pointed to a possible inconsistency between the remarks of Deane and Fitzgerald JJ in Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 (Taco Bell) and the test of the ordinary or reasonable shareholder stated by the High Court in [Campomar]. In a well-known passage in Taco Bell at 202, their Honours referred to the need to consider the question of whether conduct is misleading by reference to all those who come within the class including the astute and the gullible.
In [Campomar] at [102] and [103] their Honours referred to the attribution of characteristics to the ordinary or reasonable members of the class and to the need to isolate the hypothetical member of the class who has those characteristics. The attribution is to be objective in order to allow for the wide range of persons who would, in fact, make up the class. It is also to allow for unreasonable reactions of members at either end of the spectrum which makes up the class. We see no difference between this approach and that which was contemplated by Deane and Fitzgerald JJ in Taco Bell.
Indeed, the same view seems to have been taken by Gibbs CJ in Puxu at CLR 199; ALR 6 as follows:
Although it is true, as has often been said, that ordinarily a class of consumers may include the inexperienced as well as the experienced, and the gullible as well as the astute, the section must in my opinion by regarded as contemplating the effect of the conduct on reasonable members of the class.
Nor in our opinion is there any distinction between the words used by Wilcox J and the approach stated by the High Court in [Campomar]. In determining the effect of conduct on the reasonable members of the class, it is necessary for the court to consider objectively, as a question of fact, whether those persons have been, or would be likely to be, misled. A finding that reasonable members of the class would be likely to be misled carries with it the determination that a significant proportion of shareholders would be misled.
In any event, 10th Cantanae was a decision of a Full Court. Pincus J observed (at 309) that it was not sufficient that "some readers" were affected. Gummow J (in dissent, but not as to the test) referred (at 314-15) to the need to prove that a substantial proportion of persons was misled, in contrast to a need to establish that almost all purchasers were of a particular view. Gummow J also referred (at 315) to "the usual manner in which ordinary people behave". Accordingly, it is apparent that the test stated in 10th Cantanae is not inconsistent with [Campomar]. We disagree with a suggestion to the contrary by Finkelstein J in Domain Names at [25]-[26].
412 Further, Dowsett J said (at [23]):
I consider that this approach misconceives the respective effects of Taco Bell and 10th Cantanae. In my view, the relevant passages in both cases merely express, in different forms, the test propound by the High Court in [Campomar]. The way in which such a test is propounded in a particular case may, to some extent, reflect the way in which the applicant has sought to satisfy it. An applicant may seek to prove misleading effect by showing that many representees were misled. To discharge the relevant onus, it may well be necessary to show that a significant proportion was misled. On the other hand, there will be cases, such as the present case, where there is little, or perhaps no evidence that any person was actually misled. Where a regulatory authority seeks to prevent conduct in breach of a provision such as s 52 of the TP Act or s 1041H(1) of the Act, this will often be the case. Such an applicant will rely upon the terms of the representation and the circumstances in which it was, or is to be made, looking to the notional representative class member as the basis for assessing the likely effect of the conduct in question. To speak of a reasonable member of a class necessarily implies that one is speaking of a significant proportion of that class. It is impossible to postulate a situation in which the reasonable member of a class is not representative of such a proportion. Thus the approach adopted by Wilcox J in 10th Cantanae is simply an alternative way of expressing the test now clearly prescribed in [Campomar].
413 Now three points can be made. First, there was non-acceptance of the trial judge's doubts. Second, what is controlling is what Jacobson and Bennett JJ said. Third, the relevant formulation concerning "significant proportion of that class" was not seen as inconsistent with or superfluous to High Court authority such as Puxu and Campomar. And interestingly, but admittedly fleetingly, Campomar refers to 10th Cantanae Pty Ltd v Shoshana Pty Ltd (1988) 79 ALR 299 in footnote 145, which references Gummow J in 10th Cantanae at 324 to 325 (324 incorporates by reference aspects of 314 and 315), without any comment let alone criticism of 10th Cantanae.
414 Further, in Peter Bodum A/S v DKSH Australia Pty Ltd (2011) 280 ALR 639, Greenwood J, with whom Tracey J agreed, said (at [206]):
Some debate has arisen in the authorities about whether the test adopted in Campomar by the High Court is inconsistent with the notion that s 52 looks in a normative sense to whether a not insignificant number of persons have been misled or are likely to be misled by the impugned conduct. In Campomar, as already indicated, the High Court observed that s 52 must be regarded as contemplating the effect of the impugned conduct on reasonable members of the class of prospective buyers and the question is answered by considering the reactions of the hypothetical individual within the class excluding assumptions which might be regarded as extreme or fanciful. The hypothetical individual is a reasonable or ordinary member of the class and once the responses of the notional hypothetical individual have been determined, they are determined for the class, that is, the whole class. Therefore, the Campomar question might be (in the context of conduct said to involve representations to a section of the public at large such as prospective retail buyers of a product sold by a respondent rival trader) whether the class, as a class, has been misled or deceived or is likely to be misled or deceived by the conduct rather than whether a not insignificant number of persons in the class, in fact or by inference, have been misled or are likely to be misled. The reference to a "not insignificant number of persons" in the formulation of the test in Full Court authorities of this Court, is taken to be a reference to a not insignificant number of reasonable or ordinary persons in the class. If a not insignificant number of such persons would be misled or deceived by the impugned conduct, s 52 is contravened. That may be a test that asks a different question from whether the class as a class is misled by reference to the hypothetical notional reasonable member of the class.
415 Greenwood J (at [207]) then set out some of the passages of the Full Court in National Exchange of Jacobson and Bennett JJ that I have set out, and then a passage from Dowsett J. It would seem that he also considered what was said by Jacobson and Bennett JJ to be controlling. Then he said at (at [209]):
In the absence of a decision of the High Court expressly concluding that the proper approach to the construction of s 52 does not involve normative considerations of whether a not insignificant number of persons within the group would be misled by the impugned conduct, it seems to me appropriate to apply the test of whether a not insignificant number of persons within the relevant section of the public would be misled or be likely to be misled by reason of the impugned conduct.
416 Further, in Hansen Beverage Company v Bickfords (Australia) Pty Ltd (2008) 171 FCR 579, both Tamberlin J (at [46] and [47]) and Siopis J (at [66] to [72]) applied the "not insignificant number" or "significant number" test.
417 As far as I am aware, until the dicta in TPG there has been no Full Court authority or High Court authority which casts doubt upon the authority of what was said by Jacobson and Bennett JJ in National Exchange, Greenwood J (supported by Tracey J) in Peter Bodum and Tamberlin and Siopis JJ in Hansen Beverage. Now in TPG it was said that such cases "did not resolve the question whether it was a different and additional test to the principles stated by the High Court" (at [23(d)]). That is true. But what such cases do resolve is, first, that it is not a test which is inconsistent with or superfluous to the principles stated in Campomar and Puxu for that matter, second, that to apply it is not to put an inappropriate gloss on the statutory provisions and, third, that such a test is not a symptom of tort law infection.
418 My reading of Full Court authority prior to TPG is that the "not insignificant number" test is not being used to rewrite or gloss the words "likely to mislead or deceive". Rather, it is a formulation of the application of the statutory words. So, taking such words, which are of broad amplitude and enshrine the normative standard to be applied, the cases that I have referred to, which include Campomar itself, have been all about how such statutory words are to be applied and established in different types of circumstances. So in their application, different formulations have been used, the satisfaction of which has been found to have met the statutory requirement of "likely to mislead or deceive". The question then is whether the Campomar formulation is the only application test that should be used where conduct is directed towards the public or a class thereof rather than identified individuals. In other words, is it both a necessary and sufficient test in that context? Or is it a necessary application test but not sufficient, say, in passing off scenario cases? I do not consider, with respect to TPG, that Campomar defined away the second possibility.
419 Let me say something more general about the "not insignificant number" formulation in the context of passing off cases, which is my context and was not the context of TPG. And recall that one is looking at characterising conduct as "likely to mislead or deceive". One is not looking at causation. And one is not looking at the actual reactions of consumers or others to that conduct.
420 Now although this formulation's genesis was in cases discussing the tort of passing off, judges applying it in the old s 52 context were not making the mistake of applying common law tort concepts to the statutory provision. Rather, they were seeking to solve the problem of applying very broad statutory language "likely to mislead or deceive" to a context which was not straight forward. What do I mean?
421 In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 380 and 381, French J explained:
On the Trade Practices Act claim, his Honour adopted what may be in some circumstances a different test for the extent of ConAgra's product reputation necessary to show misleading or deceptive conduct on the part of McCain. Provided ConAgra could show on the balance of probabilities that "a not insignificant number" of persons knew of the ConAgra product, then it should be entitled to succeed. His Honour said:
"If the number of persons with the necessary knowledge is insignificant, then a fortiori the conduct complained of will not be able to be characterised as conduct that is misleading or deceptive. Once it passes, however, the threshold of insignificance, then there is much to be said for the view that the conduct in question has become misleading."
But accepting the possibility that the threshold of requisite reputation under the Act is lower than that required to support a claim in passing off, he did not think that ConAgra had satisfied the onus of showing that the number of persons for whom the name "Healthy Choice" and the package design would have the necessary secondary meaning was other than insignificant.
The nature of the question to be asked about McCain's conduct for the purposes of s 52, Trade Practices Act is to be borne in mind in considering the correctness of the approach taken by his Honour. The question is one of characterisation of the conduct, not of the reactions of consumers or others to that conduct. So where some express representation is made and that representation is demonstrably false, it is not usually necessary to go beyond that finding in order to conclude that it is misleading or deceptive. The case of an obvious puff might be taken as an exception. Where conduct depends upon context or surrounding circumstances to convey a particular meaning, then those factors must be taken into account but only as a way of characterising the conduct. Where the name and get-up of a product are in issue, the question for the purposes of s 52 is whether they are misleading or deceptive in the circumstances. The fact that some members of the relevant public may be aware of a similar product in another country does not affect the characterisation of the conduct if that number is small. The word "insignificant" was used by his Honour to identify the threshold of public awareness below which such conduct is not misleading for the purposes of the section. That word is normative but not for that reason inappropriate.
Attention must be paid to the policy of the relevant provision which, as the heading to Pt V and many of its provisions indicate, is one of consumer protection. If the similarity complained of is commercially irrelevant having regard to the number of people who know of it, then it can be concluded that the use of the name and/or get-up complained of is not misleading or deceptive. That is essentially the kind of evaluation which underpinned his Honour's finding in this case and on the primary facts that he found I am not persuaded that he erred in his approach.
422 What this is making plain is that in a passing off context, for the purposes of applying the statutory language one has to focus on the conduct considered in the circumstances. But in that context, the circumstances relevant to whether conduct is misleading or deceptive or likely to mislead or deceive include the level of public awareness of the applicant's product or service or indeed awareness of the applicant itself. That really explains the "not insignificant number" genesis. What is the level of public awareness of such matters? If you do not have such a threshold, the reasoning seems to proceed on the basis that you have not shown such an awareness. But if you have such a threshold, it is easy to see why one could conclude that in such a context, the rival's conduct considered in such circumstances is likely to mislead or deceive. 10th Cantanae and ConAgra so proceed and were not seen as inconsistent with Puxu. Peter Bodum and Hansen Beverage also so proceed and were not seen as inconsistent with either Puxu or Campomar.
423 Let me put the point another way to explain what I mean.
424 Say the class is all members of the public in Victoria. Now consider two scenarios.
425 First, take a simple case being a newspaper advertisement representing internet speeds of a service provider. Say it is said that the advertisement is misleading or deceptive or likely to mislead or deceive by reason of an exaggeration or a half-truth. The Campomar formulation could rightly be seen as necessary and sufficient, albeit that the High Court has frequently said in many fields that its own words are no substitute for the statutory language and should not be the subject of overly fine interpretation as if they were inscribed in some inflexible Talmudic text. But the Campomar formulation works well in such a context by considering a hypothetical reasonable member of that class. That is all you need. The "not insignificant number" formulation is superfluous. Indeed, satisfying the former would satisfy the latter. So far so good.
426 Second, now take the passing off scenario type case, but keep the class fixed as all members of the public in Victoria. Say the applicant and the respondent are rival boutique beer producers. Say the get-up for their products are similar and that they seek to target the workers, which I might add can be found at all echelons of Victorian society. Say that the respondent starts up its marketing and promotion throughout Victoria. And also assume, as one of the relevant circumstances, that the applicant's product and get-up is not well-known. So, the question is whether the promotion by the respondent using similar get-up is misleading or deceptive or likely to mislead or deceive. Now TPG would suggest that you only need apply the Campomar formulation, namely, whether a reasonable or ordinary member of the public in Victoria would be likely to be misled or deceived by the respondent's product and get-up. But that would be a hollow enquiry. And it would be divorced from part of the circumstances. What you also need to factor in is the public's awareness of the applicant's product and get-up; if you like, its reputation. That is part of the relevant circumstances within which to assess whether the respondent's conduct falls foul of the statutory standard. Hence the injection of the "not insignificant number" formulation. It is to recognise that conduct is not likely to be misleading or deceptive unless a "not insignificant number" knows of the applicant's reputation and therefore are likely to be misled or deceived by the respondent's use of its rival's product and get-up. So the potential effect of the respondent's rival get-up on such a "not insignificant number" can be seen as driving the analysis. Put another way, if only an insignificant number of the public in Victoria know of the applicant's product and get-up, the use by the respondent of rival get-up is unlikely to mislead or deceive members of the public in Victoria into thinking that the respondent's product is associated with the applicant's product. In other words, where reputation as a question of fact, rather than as a legal element for the statutory claim, is in issue, it is not sufficient to simply ask without more, in my example, what would be the likely reaction of a reasonable or ordinary member of the public when exposed to the respondent's conduct, being the promotion of its product and get-up. You would have left out an important part of the equation. And the obvious response would be: it all depends upon what they knew or likely knew of the applicant's product or get-up. That is why the proxy "not insignificant number" formulation is being used. It can be seen as creating a practical floor to address the factually relevant circumstances of reputation. Admittedly though, it is not conceptually pure. But with respect to TPG, it is nevertheless a useful proxy according to prior and binding Full Court authority.
427 It is neither heretical nor revolutionary to state the self-evident. A failure of an applicant to establish a relevant reputation in Australia for the purposes of the law of passing off may cause it to fail also in its case alleging a breach of the ACL as there is not a sufficiently substantial number of people in Australia aware of the applicant's product. In the absence of sufficient consumer knowledge or familiarity with the applicant's product at the relevant date, there can be no confusion or likely confusion.
428 So, in Interlego AG v Croner Trading Pty Ltd (1992) 39 FCR 348 at 387 Gummow J noted that "reputation and likelihood of deception are distinct issues, the first preceding the second, so that if the plaintiff fails on reputation that is the end of the case"; he was commenting on a case concerning both passing off and also a contravention of s 52 of the then Trade Practices Act 1974 (Cth); see also Hansen Beverage Company v Bickfords (Australia) Pty Ltd (2008) 75 IPR 505 at [74] per Middleton J.
429 Well then if this is all good, why was this not discussed in Campomar? After all, it was a passing off case. That is a good question to ask oneself. And with respect, the answer to it is provided by the specific question that the High Court was addressing, which took the reputation of the suing party, Nike, as a given in that case; of course, it is not a given in the case before me.
430 The Campomar formulation appears in the section headed "Causation and erroneous assumption". It was said (at [101]):
The other classes of case which their Honours had in mind include those of actual or threatened conduct involving representations to the public at large or to a section thereof, such as prospective retail purchasers of a product the respondent markets or proposes to market. Here, the issue with respect to the sufficiency of the nexus between the conduct or the apprehended conduct and the misleading or deception or likely misleading or deception of prospective purchasers is to be approached at a level of abstraction not present where the case is one involving an express untrue representation allegedly made only to identified individuals.
431 And it was said (at [103]):
Where the persons in question are not identified individuals to whom a particular misrepresentation has been made or from whom a relevant fact, circumstance or proposal was withheld, but are members of a class to which the conduct in question was directed in a general sense, it is necessary to isolate by some criterion a representative member of that class. The inquiry thus is to be made with respect to this hypothetical individual why the misconception complained has arisen or is likely to arise if no injunctive relief be granted. In formulating this inquiry, the courts have had regard to what appears to be the outer limits of the purpose and scope of the statutory norm of conduct fixed by s 52. Thus, in Puxu, Gibbs CJ observed that conduct not intended to mislead or deceive and which was engaged in "honestly and reasonably" might nevertheless contravene s 52. Having regard to these "heavy burdens" which the statute created, his Honour concluded that, where the effect of conduct on a class of persons, such as consumers, was in issue, the section must be "regarded as contemplating the effect of the conduct on reasonable members of the class".
432 But in this context, Nike was suing Campomar and the case proceeded on the basis that Nike (the applicant) had a world wide reputation including in Australia and that Campomar (the rival) had no reputation in Australia. As Sheppard J said at first instance (Nike International Ltd v Campomar Sociedad Limitada (1996) 35 IPR 385 at 408):
The documents to which I have referred and other documents in the case, particularly the letters written in 1985 and 1986, reinforce me in my conclusion that Mr Ruiz had for a number of years perceived the advantage his organisation could expect to gain by the worldwide marketing of its products under the Nike name in conjunction with, or with the approval of, Nike International or one or more of its associated companies. Campomar had no reputation in Australia when its marketing activities were commenced in 1993. Nike International Ltd had a worldwide reputation. By 1993 its products had become very well known in Australia.
433 So in the High Court, Nike's reputation was a given. The level of public awareness of Nike and its products was notorious. Clearly a "not insignificant number" of members of the public were well aware of Nike and its products' reputation. So, on this aspect the only issue that the Court had to address was the erroneous assumption question. And it was for that purpose that a criterion for the hypothetical member of the relevant class was being stipulated, which then backed out certain erroneous assumptions. That was what the Court was addressing at [105] when it said:
Nevertheless, in an assessment of the reactions or likely reactions of the "ordinary" or "reasonable" members of the class of prospective purchasers of a mass-marketed product for general use, such as athletic sportswear or perfumery products, the court may well decline to regard as controlling the application of s 52 those assumptions by persons whose reactions are extreme or fanciful. For example, the evidence of one witness in the present case, a pharmacist, was that he assumed that "Australian brand name laws would have restricted anybody else from putting the NIKE name on a product other than that endorsed by the [Nike sportswear company]". Further, the assumption made by this witness extended to the marketing of pet food and toilet cleaner. Such assumptions were not only erroneous but extreme and fanciful. They would not be attributed to the "ordinary" or "reasonable" members of the classes of prospective purchasers of pet food and toilet cleaners. The initial question which must be determined is whether the misconceptions, or deceptions, alleged to arise or to be likely to arise are properly to be attributed to the ordinary or reasonable members of the classes of prospective purchasers.
434 But where the applicant's reputation in Australia is in issue and is one of the circumstances to consider, it seems to me that the "not insignificant number" formulation may have relevance because it is a proxy relevant to the applicant's reputation, which is part of the matrix on which you are posing the question of whether the respondent's conduct is likely to mislead or deceive. You are not posing that question devoid from the applicant's reputation. But as I say, in Campomar that was a given. And there was no need to consider cases such as ConAgra and 10th Cantanae on such matters.
435 And as so understood, one is not applying tort concepts to the statutory framework. Rather one is identifying the setting of the circumstances. ConAgra, 10th Cantanae, Peter Bodum and Hansen Beverage make this plain. Contrastingly, neither TPG nor Trivago NV v Australian Competition and Consumer Commission (2020) 384 ALR 496 involved the passing off scenario.
436 Now if only the dicta in TPG was to be matched against National Exchange (albeit not a passing off case), Peter Bodum and Hansen Beverage, which post-date Campomar, I would not have the option not to apply the earlier Full Court authority. But post TPG, Trivago would now seem to have enshrined the dicta from TPG in a manner that now binds me, although I am a little unclear as to what debate took place in Trivago (see at [192], [193] and [206] per Middleton, McKerracher and Jackson JJ). But now given Trivago, I do not think that I am entitled to draw any comfort from the even more recent Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235 at [119] per Nicholas, Yates and Burley JJ where the matter was not debated. For completeness, I also note that the discussion in RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd [2024] FCAFC 10 at [168] per Nicholas, Burley and Hespe JJ was not dealing with a classic passing off type scenario. Further, PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598 at [193] et seq per Jagot, Nicholas and Burley JJ does not relevantly add to the debate.
437 In all the circumstances, I will treat Trivago as binding and superseding earlier Full Court authority. So, in terms of the claims concerning ss 18 and 29 of the ACL, I will apply Campomar without any "not insignificant number" test. But if I were permitted to and did apply a "not insignificant number" test, whether as an alternative or an addition, then the result would not change. As I have indicated elsewhere, VCC succeeds on the ACL claims save and except for the proposed re-branded New Certan wine.
438 Let me make one other point. The Full Court in Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (2007) 159 FCR 397 observed at [99]:
Whether or not there is a requirement for some exclusive reputation as an element in the common law tort of passing off, there is no such requirement in relation to Part V of the Trade Practices Act. The question is not whether an applicant has shown a sufficient reputation in a particular get-up or name. The question is whether the use of the particular get-up or name by an alleged wrongdoer in relation to his product is likely to mislead or deceive persons familiar with the claimant's product to believe that the two products are associated, having regard to the state of the knowledge of consumers in Australia of the claimant's product.
439 Let me conclude this section by saying something about the tort of passing off. For present purposes I repeat what I said in Flexopack at [278] to [282].
440 In summary, the elements of this tort are the following concerning products.
441 First, there has to be the existence of a reputation, at the time of the respondent's impugned conduct, in the mind of the relevant purchasing class for the applicant's products or a reputation in the get-up of the applicant's products such that the get-up is recognised by relevant purchasers as distinctive of the applicant's products.
442 Second, there has to be a misrepresentation by the respondent, whether intentional or inadvertent, that its products are those of the applicant or affiliated with the applicant or a misrepresentation by the respondent's use of the same or a similar get-up to indicate that the respondent's products are the same as the applicant's products or come from or are associated with the applicant.
443 Third, the applicant must have suffered or be likely to suffer damage flowing from the erroneous belief engendered by the misrepresentation.
444 Let me now return to the topic of reputation in the context of the tort of passing off and add a little more.
445 On the question of reputation Gummow J said in ConAgra at 372:
In my view, where the plaintiff, by reason of business operations conducted outside the jurisdiction, has acquired a reputation with a substantial number of persons who would be potential customers were it to commence business within the jurisdiction, the plaintiff has in a real sense a commercial position or advantage which it may turn to account. Its position may be compared with that of a plaintiff who formerly conducted business within the jurisdiction and has retained a reputation among its erstwhile customers, and with that of a plaintiff with a reputation which arises from its trade in the jurisdiction, but extends to goods or services which are not presently marketed by him. If the defendant moves to annex to itself the benefit of such a reputation by attracting custom under false colours, then the defendant diminishes the business advantage of the plaintiff flowing to it from the existence of his reputation.
This is so whether the plaintiff is a party which may expand into a new field of business or resume a former business conducted in the jurisdiction, or a party which may enter the jurisdiction to establish a business for the first time. The immediacy and intensity of the intention of the plaintiff to commence or resume business is, in my view, a question going not so much to the invasion of the plaintiff's rights as to the imminence of a threat sufficient to justify an injunction.
446 Further, the required reputation is something more than a reputation among a small number of persons; there must be "a substantial number of persons who are aware of the plaintiff's product" (ConAgra at 346 per Lockhart J).
447 The relevant reputation must be determined having regard to all the relevant circumstances, including the history of the applicant's product, the circumstances in which the respondent's get-up was adopted, and the circumstances prevailing in the market at the relevant time. And the relevant circumstances include the nature and extent of the relevant consumers' awareness of the features of the applicant's packaging in which a reputation is said to inhere.
448 In a get-up case an applicant must establish that it has acquired the relevant reputation in the name or get-up such that the name or get-up has become distinctive of the applicant's business or products (see Burley J in Homart Pharmaceuticals Pty Ltd v Careline Australia Pty Ltd (2017) 349 ALR 598 at [22]). An applicant must show a reputation attached to goods in the mind of the purchasing public by association with the identifying get up under which his particular goods are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the applicant's goods.
449 Further, the relevant date for assessing whether the applicant has established the necessary reputation is the date on which the respondent's impugned conduct commenced (Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1980] 2 NSWLR 851 at 861 per Lord Scarman; Thai World Import & Export Co Ltd v Shuey Shing Pty Ltd (1989) 17 IPR 289 at 302 per Gummow J; Flexopack at [275]).
450 In the present case, for the pre-existing and previously offered New Certan wine the respondents say that the relevant date is about 2013, being the time at which the first vintage of the New Certan wine was sold in Australia. For the proposed New Certan product, the respondents say that the relevant date is the current date, or alternatively the date on which the proposed New Certan product bearing the new label will be released to the market being mid to late 2024.