Campomar Sociedad, Limitada v Nike International Ltd
High Court of Australia · 2000
Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45
One witness swore he assumed brand-name laws stopped anyone else selling a NIKE product — even pet food. Whose reactions count when the question is whether conduct misleads?
What happened?
Two companies owned the trade mark NIKE in Australia for different things. The Spanish appellants had it registered for cosmetics and toiletries, particularly perfume; the American respondents had it registered and used for sporting footwear and clothing. Neither had sold goods in Australia of the same description as the other. In 1993 Campomar put a product called "NIKE SPORT FRAGRANCE" on the Australian market, displayed in pharmacies beside other sports fragrances including one marketed under the Adidas name.
Nike International said this was misleading conduct under s 52 of the Trade Practices Act 1974 (Cth) and passing off. Campomar said Nike International was trying to "swamp" its registrations by exploiting a false belief that the only NIKE goods in Australia were theirs ([2]–[5]).
What did the Court decide?
Both sides won something. Campomar succeeded on the registration question under s 28 of the Trade Marks Act 1955 (Cth), so it should not have been enjoined "in terms which barred it from all use of its trade mark registrations" ([113]). Nike International kept "a large measure of their injunctive relief" ([115]): the injunctions were sound on both s 52 and passing off ([111]), but were narrowed so that they bit on "NIKE SPORT FRAGRANCE" rather than on the word NIKE at large.
The reasoning that has outlived the dispute concerns whose reactions a court looks at when the conduct was aimed at the public rather than at anyone in particular ([102]–[105]) — and how far a court will follow a witness who says he was misled.
Proposition
What is the principle?
Where conduct is directed to the public rather than to identified individuals, whether it is misleading or deceptive is judged by isolating a representative member of the class to which it was directed and asking why the misconception has arisen or is likely to arise. Reactions that are extreme or fanciful, even if genuinely held, are not attributed to the ordinary or reasonable member of that class.
The Court's words: where the persons in question "are members of a class to which the conduct in question was directed in a general sense, it is necessary to isolate by some criterion a representative member of that class", and the inquiry is then made of "this hypothetical individual" ([103]). Isolating the "ordinary" or "reasonable" member involves "an objective attribution of certain characteristics" ([102]), recalling Gibbs CJ in Puxu that s 52 does not impose burdens for the benefit of persons "who fail[ed] to take reasonable care of their own interests". So the pharmacist's assumption that brand-name laws stopped anyone else selling NIKE pet food or toilet cleaner was "not only erroneous but extreme and fanciful" and "would not be attributed to the 'ordinary' or 'reasonable' members of the classes of prospective purchasers" of those goods ([105]). The initial question is whether the misconception relied on is "properly to be attributed" to them.
Why does this case matter?
Because counting confused witnesses is the commonest way of getting a public-facing misleading conduct case wrong. A plaintiff can usually find people who say they were confused, and in this case one of them — a pharmacist — was picked over at length in the reasons. The work is in showing which of a witness's assumptions the court should reason from, and that is an argument you have to make rather than a number you can cite.
It is also a reminder that the same facts can produce different answers in the same judgment. The marketing context that made one assumption reasonable — a sports fragrance sitting in pharmacies beside an Adidas sports fragrance ([107]) — did not rescue the same witness's wider view about pet food and toilet cleaner. Read the evidence assumption by assumption, not witness by witness.
There is a second reason the case is worth reading carefully, and it is a warning about the case itself. Campomar is often cited for a rule it does not state: that deceptive similarity between trade marks is assessed without a side-by-side comparison. That rule is real, but it lives in s 120(1) of the Trade Marks Act 1995 (Cth) and comes from Australian Woollen Mills and Shell — see Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 at [26]–[29], where Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ set the principles out. Campomar's registration discussion is a different inquiry again: likely confusion "consideration of all the surrounding circumstances, including those in which the marks would be used and those in which the goods would be bought and sold, and the character of the probable purchasers" ([83]).
Exam and application relevance
Name the cause of action before you name the test, because these three run on different questions and conflating them is the standard mistake. Infringement under s 120(1) asks whether the defendant's mark so nearly resembles the registered mark as to be likely to deceive or cause confusion, judged against a notional buyer with an imperfect recollection who knows nothing of the owner's actual use or reputation. Section 18 of the Australian Consumer Law (as s 52 now is) asks whether the conduct, in all its circumstances, is misleading. Passing off protects goodwill.
For the misleading conduct limb, do the Campomar step explicitly. Identify the class the conduct was directed at; construct the ordinary or reasonable member of it; and then ask whether the misconception you are relying on is one that person would fall into. If your best evidence is a witness whose assumption was idiosyncratic, say why it is not — do not simply count witnesses.
Do not argue that ordinary goods imply a less careful buyer. The inquiry is into the actual class and how those purchasers behave, which may cut either way.
Check your understanding
Three witnesses say they were genuinely confused. Why might that not help the plaintiff, and what would you ask about each of them?