Court finds online ads infringe Goggomobil brand
In Telstra Corporation Limited v Royal & Sun Alliance Insurance Australia Limited, the Federal Court of Australia has restrained Royal & Sun Alliance Australia Insurance Limited (now Promina Group), the proprietor of Shannons Insurance, from running an online advertisement using a famous character from another company's advertising campaign.
'Mr Goggomobil' gained popular attention throughout Australia in an award-winning Yellow Pages campaign in the 1990s. Telstra owns Sensis, which in turn owns the Yellow Pages directories. Sensis refused Shannons request to reproduce features of the Goggomobil advertisement in its own internet advertising campaign. However, Shannons decided to proceed with its campaign regardless, making some changes in an attempt to avoid liability.
The court found that the changes were not sufficient to excuse Shannons as it had retained those features most likely to attract instant recognition and response from consumers. As a result, the Shannons advertisement was held to be misleading and deceptive in contravention of the Trade Practices Act.
The decision is part of a growing body of case law concerning secondary or suggestive branding. Secondary brands are advertising images that, while not trademarks per se, become established and so well known that they create an impression of association or connection with a primary brand, even though the name of the brand may not appear (eg, the Nike swoosh or the Coca-Cola bottle). Mr Goggomobil, when employed in the manner and context of the Yellow Pages advertisement, was held to be a secondary brand. Thus, by using Mr Goggomobil, the court considered that Shannons had created a misleading association with Yellow Pages.
The court ordered that the issue of damages be decided at mediation.
Natalie Hickey, Mallesons Stephen Jaques, Sydney
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