Twentieth Century Fox Film Corp & Anor v The South Australian Brewing Co Ltd & Anor [1996] FCA 365

CATCHWORDS TRADE PRACTICES - character merchandising - application to restrain the promotion of or dealing with a particular product - application to restrain the use of the name "Duff" or any deceptively similar name in relation to beverages - application to restrain any representation that the "Duff" beer product is the product of the producers or creators of "The Simpsons", or that it is produced with the sponsorship or approval of the creators or producers of "The Simpsons"- whether "confusion" or "cause to wonder" are sufficient - confusion accompanied by intention will more readily lead to the conclusion of misrepresentation or deceptive conduct - implicit representation that "Duff Beer" produced by the breweries is an embodiment of the fictional beer from "The Simpson" series - a substantial section of the consuming public will be misled into believing that the beer marketed by the breweries is sanctioned or permitted by the applicants - artificial to anticipate that a person buying the product would take the time to analyse the subtle legal overtones - extensive merchandising by "The Simpsons" producers is significant - consumer belief in sanction by "The Simpsons" producers not due to an "erroneous assumption" - no disclaimers - insufficient disassociation from the applicants. PASSING OFF - Whether the product has derived from advertising a distinctive character which the market recognises - whether there is a "secondary meaning" which is conveyed to consumers - increased consumer sophistication with respect to commercial merchandising - unnecessary that public should know precise identity of applicants to establish passing off - not necessary to establish common field of activity - "Duff" does have a powerful secondary meaning - the attractive features arise from an association with "The Simpsons" - intention to take advantage of the goodwill of another allow the Court to more readily infer a probability that plaintiff might suffer damage - intention to exploit the association with "The Simpsons" series - not necessary to show an overt connection - the name "Duff" alone would evoke a powerful association - consumer evidence not essential. Trade Practices Act 1974 (Cth) ss 52,53 Susan M Crennan QC, "The Commercial Exploitation of Personality" (1995) 8 1PLB 129 Cadbury-Schweppes Pty Ltd v Pub Squash Co Ltd (1980) 2 NSWLR 851, cited Apand Pty Ltd v The Kettle Chip Company Pty Ltd (1994) 52 FCR 474, cited Radio Corporation Pty Ltd v Disney (1937) 57 CLR 448, applied