JUDTMENT No. 400 / 8B. CATCHWORDS TRADE PRACTICES ACT - Misleading, deceptive and false statements - passing off - Australian television program using similar name _ to that of an English company - whether the applicant has sufficient reputation in Australia - admissibility and weight of survey and statistical evidence - relevant class for the purposes of section 52 - whether the conduct of the respondent as a whole must be looked at to determine if there is a misrepresentation - whether name is descriptive or distinctive. Trade Practices Act 1974 - ss 52 and 53 Tv-am ple Applicant -v- AMALGAMATED TELEVISION SERVICES PTY LID (ATN CHANNEL 7) Respondent G 849 of 1988 CORAM: Einfeld J. a o DATE: 29 July 1988 Iu aca ; oo PLACE: Sydney 2a TS FN IN THE FEDERAL COURT OF AUSTRALIA ) ) NEW SOUTH WALES REGISTRY ) No. G 849 of 1988 ) ) GENERAL DIVISION Between: TV-am plc Applicant And: AMALGAMATED TELEVISION SERVICES PTY LTD (ATN CHANNEL 7) Respondent CORAM: Einfeld J. DATE: 29 July 1988 PLACE: Sydney MINUTE OF ORDERS 1. The application is dismissed. 2. The applicant is ordered to pay the respondent's costs. NOTE: Settlement and entry of orders are dealt with 1n accordance with Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES REGISTRY No. G 849 of 1988 ddd GENERAL DIVISION Between: TV-am plc Applicant And: AMALGAMATED TELEVISION SERVICES PTY LTD (ATN CHANNEL 7) Respondent CORAM: Einfeld J. DATE: 29 July 1988 PLACE: Sydney REASONS FOR JUDGMENT The applicant was first incorporated in 1980 in England under the name "TV-AM Ltd". In June 1986 it became a public company registered under the name of "TV-am plc". The applicant has a licence from the Independent Broadcasting Authority to broadcast throughout the United Kingdom between 6 am and 9.25 am daily and has done so since 1983. The Respondent is Amalgamated Television Services Pty. Ltd.(ATN Channel 7), an Australian company. On May 2 1988 the respondent commenced broadcasting a program entitled "TVAM". This program is screened s1x days per week betweeen the hours of 6 am and 7.30 am. The applicant has brought proceedings under the Trade Practices Act (the Act) alleging that the respondent was guilty of misleading or deceptive conduct and of making false representations contrary to sections 52 and 53(c) and (d). The applicant also claims that the respondent is passing off its program as one associated or connected with the applicant. The respondent denies these allegations and further submits that in any event the applicant must be denied relief by reason of its delay in bringing proceedings. THE FACTS The applicant's program, which is broadcast on weekdays, 1s divided into three distinct segments. Between 7 am and 9 am the program is_ entitled "Good Morning Britain". Between 9 am and 9.25 am the program is entitled "After Nine". There is some dispute as to the name prior to 31 May 1988 of the segment broadcast between 6 am and 7 am. The evidence shows that from the beginning of this year at least, both the captions "TV-am" and "Good Morning Britain" have been used. Nowhere in the program is it made clear that "TV-am" is the title of the segment as opposed to the call sigh of the station. It is clearly called "Good Morning Britaizn", a title which would have no other purpose or meaning than as the name by which it is intended to be known and called. On 31 May 1988 the title of the first segment of the program was officially changed to "The Morning Show". It is necessary to outline briefly the content of the English_ show. Videotapes in evidence demonstrate that the show has a number of features such as news, weather, guest interviews, sports reports, financial features, exercise regimes, and newspaper reviews. The financial content of the program is slight, usually amounting to no more than five minutes each hour, although the evidence demonstrates' that the company is considering increasing this by two to three minutes in the near future. The program appears to be aimed at a broad range of socio-economic groups, but its presentation can generally be described as "casual". The presenters appear without coats with the exception of the news and financial segments, and a large portion of the show takes place ina "lounge room" setting. The actual logo of the applicant's station is "TV-am", "IV" appearing in upper case and "am" in lower case. There is a hyphen between the two abbreviations. In some printed manifestations of the logos, the lower case letters "am" are sometimes the same size as "TV" but are sometimes a smaller size. In the program telecast by the applicant, the "am" is the same size as "TV". An application has been made for the registration of the mark "TV-am" in Australia. There is also some evidence of the words "AM" in upper case being used in conjunction with "ITV" in reference to the applicant. This is seen for example on the applicant's facsimiles and on some of its stationery. Third parties when writing of the applicant refer to it variously as "TV-am" or "TV—-AM". The applicant's program "Good Morning Britain" together with other material is received daily by the respondent's rival Channel 9 network by satellite feed. This arrangement appears to be a direct result of the Bond Corporation's interest in both companies. Bond Media Limited is the licensee of the Channel 9 network including TCN Channel 9 Sydney, and the Bond Corporation is currently the largest shareholder in the applicant company with a 24.9% holding. The great majority of this satellite material 1s supplied gratuitously to Channel 9. Evidence has been given of two invoices only. These were: (i) A sale for 200 pounds sterling in January 1987 of 3 x 3 minute packages for use on the Today Show on the Nine Network; (ii) A sale for 51 pounds" sterling in April 1985 of a 20 minute cassette. The only evidence of on-screen credits being given to TV-am by Channel 39 in sold or gratuitous material is in the items referred to in (1) above and in the case of a video clip of one minute's duration supplied to Channel 9 in October 1987. There may have been a few others. Sales were also made to the respondent's Channel 7 network of a one minute video clip in October 1987 and to Australia's Channel 10 group of the "Good Morning Britain" sequence in January 1987. Only the appearance on Channel 7 required an on-screen credit. In 1985, the rights to the applicant's production 'Roland Rat - Superstar' were sold to the Australian Broadcasting Commission, but no on-screen credits were required. The only other business activity carried out by the applicant in Australia is the promotional purchase of a boat bearing the TV-am logo for the Bondi Surf Lifesaving Club publicised in Britain on and near the bicentennial Australia Day 1988. Some evidence was given of the intention to distribute a book on the wedding of Prince Andrew to Miss Sarah Ferguson endorsed by TV-am and of the intention to distribute an exercise video produced by the company in Australia. No actual distribution or sales were proved of the latter, and only a small number of the former. Some reliance is also placed on the fact that the applicant's station 1s managed by Mr. Bruce Gyngell, an Australian well known in the television industry in this country. Some publicity given in Australia to some activities of Mr. Gyngell in some industrial problems experienced by the applicant was placed in evidence. The respondent's program "TVAM" displays its letters all in upper case and there is no hyphen. The respondent's intention to broadcast' this program was advertised from at least 27 February 1988. The name TVAM was suggested amongst others by the executive producer of the program, John Barton. The evidence establishes that at the time of suggesting the name, he was aware that there was a United Kingdom company called TV-am which was a licensee on the independent television network. A series of possible names were suggested by Mr Barton but the final decision as to the use of the name was made by the respondent's management. The emphasis of the respondent's program is on rather specialised news, finance and current affairs. In the language of today, it is intended to be "upmarket". Its presentation is "dressy" in style; coats are worn and the presenters sit behind desks. The content of the program comprises approximately: (i) News Headlines 1.5% (ii) News Bulletins 21.5% (iii) Weather 4.5% (iv) Economic/Business/Political segments 712.5% The program is not aimed at the general or mass market. According to Mr Barton, who hosts the program with a female co-presenter, it is seeking to be a television version of a quality financial and business newspaper such as_ the Australian Financial Review or a quality radio News and current affairs program such as the ABC's AM. It was first screened on Monday 2 May 1988 and has appeared every weekday since. The evidence reveals that there is frequent channel identification, but 1t also features words such as "... joining us now by satellite, MTVAM's London correspondent" and "... and that was Angela McKay, London correspondent for TVAM", and the like. THE ISSUES In order to establish any of the claims made, especially passing off, it is first necessary for the applicant to establish whether and to what extent it has a reputation in Australia and when the reputation commenced. In Cadbury Schweppes Pty Ltd & Others v Pub Squash Co Pty Ltd [1980] 2 NSWLR 851 at 861 Lord Scarman stated: "The judge, it is conceded, misdirected himself in holding that the relevant date for detemmning whether a plaintiff has established the necessary goodwill or reputation of his product is the date of the commencement of the proceedings ... The relevant date 1s, in law, the date of the commencement of the conduct complained of, 1 e . when the respondent began to market 'Pub Squash'." Applying this view here, the relevant reputation of the applicant will be at the time when the respondent's program was first broadcast, 1.e. 2 May 1988. As to how much reputation is needed, the applicant submitted that very slight activities will suffice. It further submits that the concept of a 'slopover' reputation from England is relevant. In BM Auto Sales Pty Ltd & Anor v Budget Rent-A-Car System Pty Ltd {19771 51 ALJR 254, Gibbs J stated at 258: "However, very slight activities in England have been held to suffice; for example, 1t was enough that the plaintiff took bookings in England (Sheraton Corporation of America v Sheraton Motels Ltd [£1964] RPC 202) or carried out orders in England (Poiret v Jules Poiret Ltd [1920] 37 RPC 177). The judgments of Knox CJ and Dixon J in Turner v General Motors (Australia) Pty Ltd [1929] 42 CLR 352 are consistent with these authorities. It was there held that an American company which had commenced to erect a factory in Australia, and had widely advertised in Australia, before the defendant committed the acts complained of, had done sufficient to enable 1t to maintain an action for passing off." The applicant also submitted that the reputation of the applicant in England is relevant to determine whether there is sufficient reputation in Australia for the purposes of these proceedings. In Chase Manhattan Overseas Corporation & Others v Chase Corporation Ltd & Another [1985] 9 FCR 129 at 140-141, Wilcox J stated: "In my opinion it 1s wrong to postulate a rule that an overseas company commencing operations in Australia for the first time is necessarily in the same position as a newly incorporated company . . Many markets are international in nature. Communications are speedy and comprehensive. Just as an overseas company may have a ""slopover" reputation sufficient to sustain a passing off action in a country where 1t does not trade: see Fletcher Challenge Ltd v Fletcher Challenge Pty. Ltd [1981] 1 NSWIR 196 at 205 —- there May be cases in which a reputation precedes the newcomer so that, upon the commencement of its operations, 1t as xrecognised for what it is. This is likely particularly to be the case where the newcomer 1° a significant and well-known company in a country with ci*se links with Australia, such as New Zealand." in Taco Company of Australia Inc. & Another v Taco Bell Pty. Ltd. & Others [1982] 42 ALR 177 at 188, Franki J does not seem to consider knowledge of business being conducted in the foreign country as relevant to the goodwill. He stated: "The evidence certainly shows that a number of people in the relevant area knew of restaurants operated 1n America by the second appellant or operated under franchises granted by the second appellant. There 1s, however, absolutely no evidence that either appellant had, to use the words of Lord Fraser, sold in the Sydney metropolitan area 'a class of goods to which the particular trade name applies,' or to use the words of Lord Diplock, there was no evidence that the respondents or any of them made a musrepresentation 'calculated to injure the business or goodwill' of either appellant. The plain fact 1s that neither appellant had any relevant goodwill or business in the Sydney Metropolitan area at the relevant time." The applicant has asserted that the international nature of the television industry makes this slopover reputation relevant. The applicant has, however, given only very slight evidence of any relevant internationalism here involved or any visibility of its name or products in Australia. In the main it relies for its "slopover™ reputation on surveys and statistics. This survey material is in the form of affidavits from fourteen individuals. A total of three surveys were carried out on April 7, 8 and 15 1988. 167 people were questioned. The questions varied but all asked as an initial question 'Have you heard of TV-AM?' followed, 1f an affirmative answer was given, by 'What is it ?'. The surveys were conducted in the city of Sydney and at North Sydney. The result of the surveys was that: 1. 12.58% of people interviewed were aware of TV~am plc; 2. 0.59% of people interviewed were aware of TVAM on the respondent's Channel 7. The respondent's program had not yet commenced. Similar affidavit evidence was compiled by the respondent covering two public surveys, also in the central business district area, on 22 April and 12 May 1988. A total of 57 people were interviewed at random with the result that: (1) 70.17% had never heard of TV-am; (ii) 19.29% had heard of TIVAM on Channel 7; (iii) 3.5% had heard of TV-am plc apart from recent publicity. The respondent has objected to the admissibility of all this survey evidence on the grounds of the questions put and the narrowness of the sample. The admissibility and weight of such evidence was considered in detail by Burchett J in the case of Shoshana Pty Limited & Anor v 10th Cantanae Pty Limited & Ors [Federal Court of Australia, unreported 16 June 19871. This case went on appeal to a Full Court but this point was not considered. His Honour stated at 27: "In Lego System Aktieselskab v Lego M Lemelstrich Ltd [1983] FSR 155 at 173 et seq Falconer J considered a submission that answers 1n questionnaires utilized in a market research survey were hearsay. After a detarled analysis of the GE Trademark Case (19691 RPC 418 (at first instance); [1970T RPC 339 (Court of Appeal); and [1973] RPC 297 (House of Lords), he said at 176: 'The G.E Case 18 in my judgment sufficient authority that such expert evidence based on the results of a survey carried out on a representative sample of the relevant public on accepted market research principles is admissible, although, no doubt, the value of the evidence will be subject to any criticism which may properly be made as to such matters as the representative value of the sample, the form of questions and the manner in which the survey has actually been carried out.'" In Chase [above] at 142, Wilcox J stated of the survey there evidence in question: "In my opinion this evidence is of no weight The evidence placed before the court failed to disclose the total number of people interviewed in the survey or the answers given by the other interviewees" Although the situation here is a little different to that facing Wilcox J, on the basis of the observations of both of their Honours, I think that here the evidence is admissible as to reputation but its worth must be greatly reduced by the small samples, the conflicting results and the novelty of the respondent's program. The applicant has also put into evidence statistical information aimed at showing the movement of people between England and Australia. This statistical information details: (i) the number of Australians entering the United Kingdom in the years 1982, 1983, 1985 and 1986; (11) the number of residents from the United Kingdom and Ireland who migrated to Australia over the past three years; and (iii) the number of residents from the United Kingdom and Ireland who visited Australia over the past three years. These categories of people, according to the applicant, may have heard of the applicant. The applicant submits that this is evidence as _ to reputation which should lead the court to draw the inference that there 1s a significant number of persons in the Australian public who are aware that the applicant conducts a morning television show in Britain. Again, the respondent objected to the admissibility of this evidence on the basis that it requires the court to draw inference on inference. The applicant submits that for such evidence to establish reputation, the court would have to draw the inference that a significant proportion of migrants and/or travellers (i) saw the applicant's program in the United Kingdom; (11) understood the applicant's program as being televised under the mark TV-am; and (iii) brought that knowledge to Australia. Some authority was cited by the applicant as to statistical information of this kind. In Chase [abovel, Wilcox J said at 141: "During each of the last few years over 200,000 people from each of Australia and New Zealand have visited the other country. In each of 1982 and 1983 over 28,000 Australians visited New Zealand on business It 1s reasonable to suppose, therefore, that many people resident 1n Australia — and especially those in business - had heard of Chase Corporation before 1t commenced any operations in this country Many of the persons who have given evidence in this case are in that category. This reputation cannot be ignored in considering whether the use by the first respondent in Australia of 1ts New Zealand name 1s likely to mislead or deceive persons 1n Australia; to the extent that people have already become aware of the identity of the company they will not be msiled or deceived " The only other evidence as to Australian reputation brought by the applicant is the business or public activities previously outlined. These are the donation of the surf boat, the sale and distribution of copies of the Royal Wedding book, an intention to market the Izzie exercise video, and the involvement of Mr. Gyngell. In my opinion, these are of minimal if any significance to this case. Given that the applicant has established some small reputation within the borders of Australia, the next question which arises 1n relation to section 52 of the Act is whether a significant number of the relevant class of person has been deceived or misied as required by the section. THE RELEVANT CLASS Section 52 requires that a particular class of persons be deceived or misled. This 1s made clear in Parkdale Custom Built Furniture Proprietary Limited v Puxu Proprietary Limited [198212 149 CLR 191 by Gibbs CJ at 199: "Section 52 does not expressly state what persons or class of persons should be considered as the possible victims for the purpose of deciding whether conduct 1s misleading or deceptive or likely to mislead or deceive It seems clear enough that consideration must be given to the class of consumers likely to be affected by the conduct Although it 1s 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 be regarded as contemplating the effect of the conduct on reasonable member of the class What 1s reasonable will of course depend on all the circumstances " The applicant attempted to distinguish this case on the grounds that television viewers do not have to pay money to watch the medium in Australia and are therefore not going to be the particularly Fw Bd discriminating type of person to whom Gibbs CJ is referring in _ that passage. The applicant submitted that the relevant class comprises those people who know of the reputation of the applicant. It argued that the relevant class must be wider than television viewers because members of the public who read newspapers but never watch the respondent's program could nevertheless be confused by the respondent's use of the applicant's name. The respondent submitted that the relevant class is the target audience or in other words those persons who have an interest in the content of the respondent's television program. This class, the respondent submitted, is limited to the upper socio-economic strata of society or persons who would have an interest 1n business, finance and political news. Section 52 requires that a significant number of persons in the relevant class be deceived or misled. What is a significant number of people is a question of fact, and the only evidence as to people who may be misled or deceived is the survey material. The applicant submitted that the surveys allow the inference to be drawn that approximately 10% of reasonable people would be likely to be misled or deceived. However, it is clear that only two persons out of the 167 interviewed in the applicant's survey, confused in any way the respondent's program with the applicant. Thus only an insignificant section of the public is involved. The cases make 1t clear that a misrepresentation 1s necessary. In Taco Labove], Deane and Fitzgerald JJ said at 202: Paid -14- "Irrespective of whether conduct produces or is likely to produce confusion or misconception, 1t cannot, for the purposes of section 52, he categorized as misleading or deceptive unless it contains or conveys, in all the circumstances of the case, a misrepresentation " It 1s submitted by the applicant that the likelihood of deception or misleading conduct complained of consists in the respondent: (1) passing off its program as _ connected with the business of the applicant; (ii) representing in trade or commerce that the respondent's program is connected with the business of the applicant; (iii) representing in trade or commerce that the respondent's program or the respondent itself has the sponsorship or approval of or an affiliation with the applicant. The applicant further argued that in determining whether there has been any misleading or deception by the respondent, 1t 1s irrelevant to look past the use by the respondent of the applicant's name. It was submitted that the knowledge of members of the public in Australia of the existence of the name of the applicant company and the fact that it now runs a morning television show no matter what its name, is sufficient. However, 1t seems to me that in order to determine whether there has been a relevant misrepresentation, it 1s necessary to look to the conduct of the respondent as a whole. Such factors would include: ay (1) station identification by the respondent during the course of ats program, and the use of the network's distinctive news logo and background; (11) advertisements placed by the respondent in various newspapers indicating that its program is associated with the respondent's television station or network; (iii) actual differences in the mark; (iv) the style and content of the respondent's program compared with the program broadcast by the applicant; (v) the publicity generated by the respondent in relation to its progran. The authorities support this general proposition. In Sitmar Cruises Ltd v_Carnival Cruise Lines Inc & Ors [19861] ATPR 40-728 at 47-949, Beaumont J said, with characteristic clarity: "In order to establish a contravention of this provision, 1t must be shown that the conduct in question contains or conveys, in all the circumstances of the case, a misrepresentation: see Taco Company of Australia Inc. & Anor v Taco Bell Pty Ltd & Ors [1982] 42 ALR 177 per Deane and Fitzgerald JJ at 202). It is not enough that the conduct damages a rival trader: it must mislead or decelve or he likely to mslead or deceive "members" of the public in their capacity as consumers" (Parkdale Custom Bu1lt Furniture Pty Ltd [1982] 149 CIR 191 per Mason J at 203) In considering these questions, the respondent's conduct must be viewed as a whole (see Puxu, supra, per Gibbs CJ at 199) " Similarly 1n the English passing off cases of D.C. Thompson & Co Ltd v Kent Messenger Ltd and Another [1975] RPC 191 and Morning Star atl Co-operative Society Ltd v Express Newspapers Ltd [1979] Fleet Street Reports 113, the newspapers in question were compared in their entirety to determine whether there had been a relevant misrepresentation. Further, 1t was said in Parkdale [above] at 199 by Gibbs CJ: "The conduct of the defendant must be viewed as a whole. It would be wrong to select some words or act, which, alone, would be likely to msilead 1f those words or acts when viewed in thelr context, were not capable of misleading It 1s obvious that where the conduct complained of consists of words it would not be right to select some words only and to 1gnore others which provided the context which gave meaning to the particular words." If the conduct of the respondent alleged to give rise to the misleading/deception is viewed as a whole, the following additional differences can be ascertained: (i) The actual logos of the applicant company and of the respondent's program differ. (ii) Although the types of program broadcast by the applicant and the respondent are both early morning breakfast shows, their content and target audiences vary considerably. (111i) The sets and mode of delivery of the on air presenters are significantly different. (iv) The applicant claims the reputation for its corporate name. The respondent's use of the name is for a television program. a (v) The applicant is an English company incorporated in England with minimal business activity in Australia. The program of the respondent is broadcast purely in Australia. This consideration was regarded as relevant by Beaumont J in Sitmar Cruises [above] at 47,950: "Further, 1f any likelihood of deception might otherwise have arisen from the parties' use of similar slogans, it would be eliminated by the considerable distance separating the locations from which Sitmar and Carnival carry on their respective operations. Although Carmival has expressed anterest in moving into the Southern Pacific region, no final decision to do so has yet been made " In relation to the actual logo, the applicant submitted that it may rely on both the registered name of the company and on the form of the name as it 1s printed on some stationery and as it is at times used by third parties. The respondent contends that the applicant may rely only on the mark TV-am. In relation to section 52 the respondent relies on Parkdale for the proposition that it is the conduct of the respondent which must be misleading and that therefore the way 1n which the name is used by third parties is of no relevance. The respondent further submits that as 1t is the respondent's conduct to which regard must be had for the purpose of determining if there has been a relevant misrepresentation, no reliance can be placed by the applicant on the misinterpretation by third parties of its name as "TV-AM" rather than as "TV-am". In my view, the respondent's approach is correct. It is clear that if a name comprises descriptive terms, a lesser degree of difference between the two products is required. Pee In Hornsby Building Information Centre Proprietary Ltd and Another v Sydney Building Information Centre Limited [1977-1978] 140 CLR 216, Stephen J said at 229: "There 1s a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name Because 1t 1s descriptive, 1t 1s equally applicable to any business of a like kind, 1ts very descriptiveness ensures that 1t 1s not distinctive of any particular business and hence its application to other like businesses will not ordinarily mslead the public In cases of passing off, where 1t 1s the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor's trade name will render the latter immune from action. If this be so in the case of passing off actions, the case of section 52(1), concerned only with the interests of third parties, is a fortior1. To allow this section of the Trade Practices Act to be used as an instrument for the creation of any monopoly in descriptive names would be to mock the manifest intent of the legislation " Decriptive mames can however obtain a secondary meaning and become distinctive. In South Australian Telecasters Limited v Southern Television Corporation Limited [19701 SASR 207, Walters J stated at 220: "I apprehend the difficulty of distinguishing between words which are descriptive and those which are distinctive; sometimes the words "shade gradually and almost imperceptibly from one type into another " And in some circumstances, a descriptive name can become so identified with a particular business as to give the name a secondary signification differing from its primary one, so that 1% will be understood and known to the public in a secondary sense and as denoting the business of a particular enterprise." In the present case the applicant submitted that the name TV-am is distinctive of the applicant. It says that in ordinary parlance the letters TV-am cannot be placed in a sentence unless they are being used Put as a name. The applicant submits that the fact that it is a clever combination which successfully indicates to ordinary people the concepts of "morning" and "television" ought not to be confused with the situation which might have arisen had the applicant chosen to call itself "Morning Television Pty Ltd." The respondent says that TV-am is descriptive for the reasons that: (1) it accurately describes the activities of the applicant, namely morning television; (ii) both the Macquarie dictionary and the Oxford Dictionary contain one entry each for "TV" and "am". Given the small extent of the reputation which the applicant has been able to prove in Australia, and given the substantial differences between the applicant's company name and activities and the respondent's program, there is in my opinion more than sufficient to negate the existence of a misrepresentation irrespective of whether the Name is categorized as descriptive or distinctive. As no misrepresentation has been made by the respondent which 1s likely to mislead or deceive the relevant class, the claim of the applicant based on section 52 of the Trade Practices Act must fail. The applicant's claim under section 53 fails for the same reason, 1.e. there is no relevant misrepresentation by the respondent such as _ would bring its acts within the words of the section. The applicant finally relies on passing off. The passing off alleged by the applicant is not, as it could not be, of the respondent's program as the program of the applicant. Rather the alleged passing off 1s of the respondent's program as being associated or connected with the applicant company. The essential elements of passing off were taken by Franki J in Taco fabovel at 187 from the judgment of Lord Diplock in Warnink (Erven) v Townend & Sons (Hull) Ltd [1979] AC 731 as follows: "Lord Diplock (at 742) said that 1t was possible to identify five characteristics which must be present in order to create a valid cause of action for passing off They are: '(1) a msrepresentation (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 1s a reasonably forseeable 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.'" At 183 Franki J referred to the comment of Lord Fraser of Tullybelton in the same case on the justification for the action of passing off. Frank1 J stated: "The true basis of a passing off action 1s clearly shown in the following passage from lord Fraser of Tullybelton's speech ... where his Lordship said: 'I note in passing that the justification for the passing off action to prevent such misrepresentation continuing 1s not to protect the public but to protect the appellant's property in the goodwi11./" Even if the applicant has a sufficient reputation, it has not established a misrepresentation for the purposes of passing off in accordance with these criteria. As the applicant has failed in all its claims, it is not necessary to consider the respondent's submissions as to delay. I dismiss the application. The applicant will pay the respondent's costs. SEGRETTNRDTINR ES ne re | cortify that 'his ard the 20 Crwenty) rreceding pages are a true copy ci the Reasons for Judsment herein of his Honour Mr Justice Einfeld c Raconne Bor Asscciaie Dated: L4 ory \4%5