## Facts

- Sue Smith was a well-known television personality in New South Wales and elsewhere in Australia.
- Smith’s commercial interests were managed through her company, Shoshana Pty. Ltd. (Shoshana).
- 10th Cantanae Pty. Ltd. created print advertising for Blaupunkt video recorders.
- The advertisements showed a young woman watching television and used text identifying her as “Sue Smith,” stating that “Sue Smith” had taken control of her video recorder.
- The woman depicted and the television personality were both brunettes, but otherwise did not materially resemble each other.
- At trial, the judge found the advertiser did not know of the television personality and that the use of the name “Sue Smith” was coincidental.
- The trial judge nevertheless found that members of the public would associate the name in the advertisement with the television personality and held the advertiser liable for passing off (and related statutory claims).
- 10th Cantanae appealed to the Full Court.

## Issues

1. Whether use of a well-known person’s name in advertising can amount to a misrepresentation actionable in passing off by suggesting endorsement, approval, or association.
2. Whether, on these facts (common name; no look-alike; claimed coincidence), the evidence showed that ordinary consumers were likely to be misled into thinking the television personality authorized or was connected with the advertisement.
3. What level of likely deception must be shown—specifically, whether it is necessary to show that a significant proportion of the relevant public would be misled rather than a remote or minor risk.
4. What role (if any) consumer survey evidence could play in proving likely public deception in this setting.

## Decision

- The Full Court allowed the appeal in substantial part and rejected the trial judge’s broad approach that any implied endorsement reference is enough, without a careful factual showing of likely deception.
- The majority held that liability in passing off (and parallel misleading conduct analysis) turns on whether the conduct would, as a matter of practical likelihood, mislead a significant proportion of the relevant audience.
- On the record, the majority was not satisfied that the mere use of the name “Sue Smith,” in the context of the advertisement and without meaningful visual resemblance, was shown to be likely to lead a significant portion of consumers to believe the television personality endorsed or was associated with Blaupunkt video recorders.
- The court treated evidence directed to public reaction (including survey-type material) cautiously, focusing on whether it reliably demonstrated likely deception among ordinary consumers in the real market context.
- Gummow J dissented, favouring a view more sympathetic to the plaintiffs’ claim that the advertising use of the name operated as a misrepresentation trading on the television personality’s reputation.

## Legal Principles

- Passing off is not confined to misstatements of trade source; it can extend to a misrepresentation that goods or advertising have been authorized, approved, or associated with a person whose name carries commercial value.
- Even in “character merchandising” scenarios, the plaintiff must still prove the orthodox elements in substance: goodwill attached to the identifying matter, a misrepresentation to the public, and likely damage.
- The fact that a defendant lacked intent to copy or lacked knowledge of the plaintiff is not, by itself, a complete answer; the main question is the likely effect on ordinary consumers.
- A shared or common name, without more, does not automatically establish a misrepresentation; the court examines the whole advertisement and the market context to decide whether an endorsement or association message is likely to be taken from it.
- For statutory misleading or deceptive conduct analysis, it is not enough to point to a theoretical possibility of confusion; the plaintiff must show that a significant proportion of the relevant class would likely be misled.
- Survey evidence may be admissible, but its weight depends on sound method and fit with the actual question of likely deception raised by the impugned advertisement.

## Conclusion

This case treated celebrity-name advertising claims as possible, in principle, under passing off and misleading conduct, but the Full Court required a concrete, fact-based showing that a significant portion of consumers would likely infer endorsement or association; on the evidence, the use of “Sue Smith” in the Blaupunkt advertisement was not shown to meet that threshold, so the trial court’s expanded approach to liability was not maintained on appeal.


10th Cantanae Pty. Ltd. v. Shoshana Pty. Ltd., 79 A.L.R. 299 (1987)