In the case of Verrocchi v Direct Chemist Outlet, the applicant sought orders restraining the respondent from using marketing items for its pharmacy store which were similar or significantly identical to those used by the applicant.
The applicant contended that there was similar use of three primary colours, a logo, and marketing slogans. While this might normally be considered a breach of trade mark and/or copyright, often cases such as this are focused primarily on the Australian Consumer Law, where the threshold of proof is lower. As a result, the applicant contended in this case that the respondent was deceiving consumers by engaging in misleading and deceptive conduct.
Whilst the Court held that the respondent was “heavily influenced by, and copied elements of, the applicant’s get up”, this did not constitute misleading or deceptive conduct. This conclusion was premised on the fact that the colours in question were commonly used within the discount retail business, as well as the fact that they were not used in a consistent manner by the applicant across all of its stores.
Essentially, the applicant was unable to establish that its marketing get up was of such a reputation that it had become distinctive of its business or products, to the exclusion of all others. Further, with sufficient placement by the respondent of its name across its stores and marketing, the colour scheme and logo were not likely to deceive consumers who would be able to differentiate the two brands.
The case establishes that copying trade indicia does not necessarily constitute misleading and deceptive conduct under s 18 of Australian Consumer Law, and the important lesson for business owners is that in order to protect your business, a full range of intellectual property protections may be necessary, including seeking registered trade marks where possible.
For more information, contact our IP Law team.