S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd [1998] FCA 1463

FEDERAL COURT OF AUSTRALIA TRADE PRACTICES – PASSING OFF –whether publication of a magazine with masthead having some similarity to that of pre-existing magazine amounts to misleading and deceptive conduct contrary to s 52 Trade Practices Act 1974 where name descriptive of the sport with which the magazine is concerned is given prominence in both publications.

TRADE PRACTICES – examination of the principles applicable to s 52 of the Trade Practices Act 1974 when appellate courts may take a view different to the trial judge on whether conduct is misleading or deceptive – where conduct complained of involves name of a product or get-up including a word of general application – examination of law where relevant name includes a descriptive word.

TRADE PRACTICES – PASSING OFF – whether evidence from persons in class to whom representation is directed is admissible and persuasive in determining whether conduct is indeed misleading or deceptive – whether question is ultimately for Court to decide. Trade Practices Act 1974 (Cth) – s 52 Biogen Inc v Medeva plc (1996) 36 IRP 438 – cited Esso Australia Resources Limited v Commissioner of Taxation (1998) 98 ATC 4768 – cited S W Hart & Co Pty Ltd v Edwards Hot Water Systems (1984-5) 159 CLR 466 – cited, discussed Turbo Tek Enterprises Inc v Sperling Enterprises Pty Ltd (1989) 23 FCR 331 – cited Skybase Nominees Pty Ltd v Fortuity Pty Ltd (1996) 36 IPR 529 – cited Federal Commissioner of Taxation v Chubb Australia Ltd (1995) 95 ATC 4186 – referred to Federal Commissioner of Taxation v Smith & Nephew Pty Ltd (1994) 94 ATC 4507 – referred to Pacific Dunlop Ltd v Hogan (1989) 23 FCR 553 – discussed Allsop Inc v Bintang Ltd (1989) 15 IPR 686 – referred to 10th Cantanae Pty Ltd v Shoshana Pty Ltd (1987) 79 ALR 299 – referred to Taylor v Johnson (1983) 151 CLR 422 – referred to The Heating Centre Pty Ltd v Trade Practices Commission (1986) 65 ALR 429 Brown v Jam Factory Pty Limited (1981) 53 FLR 340 – cited Henjo Investments Pty Limited v Collins Marrickville Pty Limited (1988) 79 ALR 83 – cited Equity Access Pty Limited v Westpac Banking Corporation (1990) ATPR ¶40-994 – followed