Partner, Belinda Breakspear and Senior Associate, Harriet Young, have authored the Australian chapter of The Global Legal Post Luxury Law Guide 2024. The second instalment of our two-part series addresses privacy and endorsement, product placement regulation, and corporate image protection trends for luxury brands in Australia.

Download the full chapter here or read below.

4. Right of privacy, publicity and personal endorsement

4.1 Sources of law

There is no right of privacy, nor right of publicity, in Australia. Protection against unauthorised use of a person’s name, image or likeness for personal endorsement purposes may be achieved by the tort of passing off (see Section 1.1, in Part 1), the ACL, privacy law, defamation and (in some cases) trade mark infringement (see Section 1.3, in Part 1).

4.2 Substantive law

The ACL broadly prohibits engaging in conduct that is misleading or deceptive or is likely to mislead or deceive in trade or commerce. The ACL also specifically prohibits making false representations about goods or services, including:

  • making a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or
  • making a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation.

These specific prohibitions also have a particular relevance to passing off in personal endorsement cases (see Section 1.1, in Part 1).

4.3 Enforcement

Current issues celebrities face when using personal endorsements when working with luxury brands include that the unauthorised use of their name, image or likeness is not innately unlawful in Australia.

It may be possible to minimise the risk of contraventions of the ACL and/or passing off for the unauthorised use of a person’s name, image or likeness for personal endorsement purposes, for example, by the use of a notice disclaiming association with the person. However, to be effective, any such disclaimer must be bold, precise and compelling, and must be effectively brought to the notice of any person to whom the goods or services may be supplied. Australia currently has no specific legislation which addresses the potential misuse of deepfake technology, and these issues are yet to be tested by the courts under the currently available legal framework including defamation law, intellectual property laws and consumer protection laws. However, there are plans to implement an artificial intelligence regulatory scheme including to combat the misuse of deepfakes and other deceptive conduct.

5. Product Placement

Product placement is permitted in Australia, subject to prohibitions and restrictions relating to tobacco and alcohol products. Additionally, some industries have their own voluntary advertising codes, for example, alcoholic beverages and therapeutic goods.

While there is no specific product placement regime, the practice may also implicate existing trade marks (including passing off), copyright and consumer protection laws, amongst others.

Commercial product placement activities are generally governed by contracts. Following breach of contract, a brand owner may be entitled to one or more remedies in contract law, most commonly an award of damages and/or specific performance and/or injunction to restrain breach of contract, subject to any valid terms of contract that exclude, restrict, or qualify rights and remedies. Generally, specific performance and injunctions will not be ordered unless a remedy in damages would be inadequate. In circumstances where damages might be an inadequate remedy, the courts may still decide that specific performance is not appropriate for jurisdictional or discretionary reasons.

Concerns facing luxury brands for product placement in Australia may include that trade mark infringement is unlikely to occur where goods bearing their trade mark(s) feature in film or broadcast, unless there is ‘use as a trade mark’ (see Section 1.3, in Part 1). Additionally, copyright subsisting in artistic works is not infringed by its ‘incidental’ inclusion in film or broadcast, amongst other possible defences/exceptions (see Section 2.3, in Part 1). However, the inclusion of a product in a film or advertising without permission of the brand owner, can lead to claims of misleading conduct under the ACL, as the inclusion of the product can imply a wrongful affiliation/endorsement with the brand owner.

6. Protection of corporate image and reputation

There is no right of privacy, nor right of publicity, in Australia (see Section 4.1, above). Rather, protection of corporate reputation may be achieved by the tort of passing off (see Section 1.1, in Part 1), the ACL, defamation (in some cases), and trade mark infringement (in some cases) (see Section 1.3, in Part 1).

In terms of corporate image and reputation trends in Australia, Environment, Social and Governance (ESG) consulting services and frameworks for companies are becoming increasingly popular. With this, ESG-related litigation is certainly in the pipeline, including for example: as the Australian regulatory authorities start cracking down on ‘greenwashing’ or ‘climate-washing’ misrepresentations by businesses; and as publicly listed companies face scrutiny for values-based corporate donations to the ‘Yes’ political campaign in the recently failed voice referendum, without shareholder approval.

In practice, while employment and customer contracts may include non-disparagement clauses or other conditions relating to acceptable behaviour or similar, the validity and enforcement of such clauses will ultimately depend on the circumstances of the particular contract, and seeking legal advice is recommended.

Selling parallel imports and reselling genuine branded products that have been lawfully acquired is generally acceptable in Australia, which may create unique concerns for luxury brands that counterfeit goods might be sold as real items in the local secondary market. One option for trade mark owners (or in some cases authorised users) to seek to curb counterfeit goods from coming into Australia, is to lodge a Notice of Objection with the Australian Border Force (ABF), which allows the ABF to temporarily seize suspected infringing goods. A Notice of Objection must be accompanied by a Deed of Undertaking. This is a formal undertaking by the objector (IP rights holder) agreeing to repay the costs resulting from any seizures made, such as transportation, storage, and destruction costs. Trade mark infringement is also unlikely to occur where second hand luxury goods bearing their original trade mark(s) are repaired or reconditioned by third party service providers, provided clear statements are used in good faith to indicate the purpose of the repairs (including accessories and spare parts), with a disclaimer that the goods have been reconditioned, and provided such representations are accurate and will not cause confusion (see Section 1.3, in Part 1).

The first instalment of this two-part series addresses trade mark ownership, protection, and copyright law for luxury brands in Australia. Read here.