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The Federal Court recently considered a passing-off dispute involving two competing art supplies businesses operating under the name "Jackson". The Australian retailer and applicant, Jacksons Drawing Supplies (JDS), whom did not register the trade mark "Jackson", brought proceedings against Jackson's Art Supplies (JAS) the UK competitor and its Australian affiliate, Jackson's Art Australia Pty Ltd (JAA).
Background:
JDS is an established Australian art supplies retailer which started in Western Australia dating back to 1930. It has traded under the name "Jacksons Drawing Supplies" since 1955 and has since had a long standing brick-and-mortar, in Perth. JDS's website has been in operation since the early 2000s, and the business has maintained significant annual sales revenue. It trades under the names "Jacksons" and "Jacksons Drawing Supplies."
JAS is a UK based art retailer established in 2000, selling art materials both in store and online. It trades under the names "Jackson's," "Jackson's Art," and "Jackson's Art Supplies," with its website (jacksonsart.com) accessible to Australian customers since 2001.
From 2013, JAS began offering Australian dollar payments and, by 2018, introduced an Australia-specific website. In 2022, it created Jackson's Art Australia Pty Ltd (JAA), based in Adelaide, to handle local warehousing and customer service. JAS itself does not operate any physical stores in Australia.
Issues:
The key issue before Justice Jackson was whether JAS's conduct amounted to misleading or deceptive conduct and misleading representations contrary to sections 18 and 29 of the Australian Consumer Law (ACL), and further whether such conduct also constituted the tort of passing off. Justice Jackson evaluate the following to assist in determining his decision.
Date for Assessing JAS Reputation
A critical question was the point in time at which JDS' reputation should be measured. While JDS limited its claim to JAS' conduct from October 2018, the underlying activities, such as selling to Australian consumers and using Australian dollars online, had begun as early as 2005 and 2013. Justice Jackson accepted the October 2018 date for the purposes of the case as JAS did not challenge JDS' assertion.
JDS Geographical Scope of Reputation
JDS had a strong reputation in its core markets of Western Australia and the Northern Territory. The question was whether this extended nationwide. Justice Jackson rejected the argument that success in a single state automatically translates to a national reputation. Nevertheless, he accepted evidence showing web traffic from across Australia as sufficient to demonstrate a consumer level of awareness beyond the core markets.
JAS Overseas Conduct and Misrepresentation within Australia
For the ACL claim to succeed, it was necessary to establish that JAS created the impression of being an Australian business. The Court highlighted features such as the use of an Australian subdirectory on the website, default pricing in Australian dollars, references to an Adelaide location, and packaging with an Australian address. These factors collectively contributed to ordinary consumers perceiving JAS as linked to JDS.
Business Names, Domain Names, and Metadata
JAS argued that JDS' registration of business names and domains, and its addition of metadata keywords, constituted misleading conduct. Justice Jackson dismissed these claims, ruling that such registrations alone are unlikely to mislead consumers and that metadata changes had no evidential effect on consumer behaviour.
Applicant's limitation to its relief- Delay and Discretionary Relief
Despite establishing liability, JDS' delay in enforcing its rights limited the relief available. Justice Jackson found that JDS should have acted as early as May 2015, when its managing director discovered relevant domain names were in use by JAS but failed to investigate further. The Court concluded that this "want of diligence" meant broad injunctions were inappropriate, and instead required JAS to display a clear disclaimer distinguishing itself from JDS on its Australian website.
Court ordered:
The Court, ordered in addition to costs, for JAS to implement a Pop-Up Disclaimer that appears each time a user accesses the website in a new browser, which states "not affiliated with the Australian Company Jacksons Drawing Supplies Pty Ltd or its website jacksons.com.au" and a footnote which reinstates the disclaimer mentioned in their pop-up disclaimer. The court however rejected proposals for a hyperlink to the applicant's website and declined to require disclaimers in other media, as the misleading conduct was confined to the website.
Conclusion
Justice Jackson's decision highlights the intersection of IP, consumer law and passing off in an online, cross-border marketplace. Although JDS established misleading conduct, its delay in acting limited the scope of relief. The case reinforces the need for businesses to monitor online brand use and act promptly, while showing how the Court seeks to protect established reputations through targeted, practical remedies.
Should you wish to speak further on this, or have any queries relating to your businesses IP protection, please contact our Intellectual Property team David Mazzeo and Stefano Mazzeo of our office.
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