Fat Blaster blows away Fat Terminator in passing-off action

Australia

In Cat Media Pty Limited v Opti-Healthcare Pty Limited, the Federal Court of Australia has ruled that Opti-Healthcare's use of the name 'Fat Terminator' for a weight-loss pill was an attempt to pass off its product as Cat Media's Fat Blaster slimming pill. The court held that the packaging of the two parties' products was similar and that both names had the same connotation of explosive force.

Cat Media introduced its Fat Blaster weight-loss supplement in November 2000. It soon became the biggest-selling weight-loss product in Australia. The get-up of Fat Blaster packaging is highly distinctive and unusual. It is packaged in a box designed to lie horizontally on the shelf so as to display its largest face to potential purchasers and the get-up includes a prominent photographic image of a slim, young couple in bikini and shorts.

In reaction to the success of Fat Blaster, Opti-Healthcare developed and marketed its own slimming pill, named 'Fat Terminator'. The final form of the Fat Terminator packaging was of the same design, dimensions and colour scheme as the Fat Blaster product, and included a similar photographic image of a young couple. It also retailed for the same price as Fat Blaster. Based on these similarities, Cat Media filed an action claiming that Opti-Healthcare was (i) attempting to pass off its product as Fat Blaster, and (ii) engaging in misleading and deceptive conduct in breach of Section 52 of the Trade Practices Act 1974.

The Federal Court agreed with Cat Media. It was satisfied that the company has acquired substantial goodwill and reputation in the name 'Fat Blaster' and in the get-up of the packaging. Opti-Healthcare, said the court, had copied the highly distinctive features of the Fat Blaster get-up, namely the design, dimensions, colour scheme and photographic image, in order to misrepresent that either Fat Terminator is Fat Blaster or that it comes from the same source. The court also noted that Opti-Healthcare's choice of the name 'Fat Terminator' was calculated not to distinguish it from the name 'Fat Blaster', but to create an impression of a connection between the two products. The name 'Fat Terminator', said the court, brought with it a connotation of the explosive force of blasting, particularly as use of:

"the word 'terminator' [...] was calculated to evoke a connection with [Hollywood star] Mr [Arnold] Schwarzenegger and the [Terminator] movie roles in which he blasts away opponents. The 'Fat Terminator' name is not calculated, despite its prominence on the face of the Fat Terminator box, clearly to distinguish Fat Terminator from Fat Blaster."

The court also held that, for the same reasons that it was guilty of passing off, Opti-Healthcare had engaged in misleading and deceptive conduct in breach of the Trade Practices Act.

Stephen Stern and Robert Sdraulig, Corrs Chambers Westgarth, Melbourne

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