Wingate Marketing Pty Limited and Eileen Mary Woolley v Levi Strauss and Co and Levi Strauss (Australia) Pty Limited

(1994) 121 ALR 191; [1994] FCA 1001

Federal Court of Australia

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Interrogate

Catchwords

1. Trade Marks
2. › Infringement
3. › Deceptive similarity
4. › Comparison of marks
5. › Whether 'REVISE' deceptively similar to 'LEVI'S'
6. › Distinction between infringement and passing off in assessing deceptive similarity
7. › Relevance of pronunciation, intention, and trade evidence
8. › Trade Marks Act 1955 (Cth), ss 6, 58, 62
1. Trade Marks
2. › Infringement
3. › Use as a trade mark
4. › Second-hand goods bearing original manufacturer's marks
5. › Whether retention of original trade marks on second-hand goods marketed under different label constitutes infringing use
6. › Whether connection in course of trade broken by resale of second-hand goods
7. › Trade Marks Act 1955 (Cth), ss 6, 58, 62
1. Trade Practices
2. › Consumer protection
3. › Misleading or deceptive conduct
4. › Marketing of second-hand goods
5. › Whether marketing of second-hand jeans bearing original manufacturer's marks likely to mislead consumers as to trade source
6. › Trade Practices Act 1974 (Cth), s 52
1. Tort
2. › Passing off
3. › Second-hand goods
4. › Whether marketing of second-hand goods under new label but bearing original manufacturer's marks constitutes passing off

Quick Take

Where a second-hand dealer markets goods under its own mark while retaining the original manufacturer's trade marks, the manufacturer's marks are not used 'as a trade mark' by the dealer because they serve to indicate origin by comparison or contrast rather than to indicate a trade connection with the dealer. However, such marketing may still constitute passing off or misleading conduct under s 52 of the Trade Practices Act if the overall presentation is likely to mislead consumers as to the trade source. The test for deceptive similarity under s 62(1) focuses on the comparison between the registered mark and the mark as used by the defendant, not on the broader circumstances relevant to passing off.