Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd

Melbourne Chinese Press Pty Ltd and Chinese Times Newspaper Pty Ltd (MCP) sought leave to appeal against a decision by Conti J in a suit alleging infringement of a trade mark and copyright by the respondents, Australian Chinese Newspapers Pty Ltd (ACN). The primary judge had determined only the issues relating to liability; no final order had yet been made. The issue before the court was whether the primary judge was correct in holding that MCP infringed the trade mark and copyright owned by ACN. The court considered the evidence and submissions from both parties, and concluded that the primary judge was correct in his findings. The appeal was dismissed with costs.

The court found that the primary judge’s finding that the perceived confusion of customers was due to MCP’s adoption of a logo similar in appearance to that of ACN was not in error. The evidence established that purchasers of Chinese daily newspapers do not usually state the name of the newspaper they desire to purchase, so similarities of sound and meaning did not play as important a part as they might in relation to some other goods. The court also found that the primary judge’s emphasis upon the visual similarity of the marks was understandable and did not reflect error. The difference in appearance, sound, and meaning of the third characters did not amount to a fatal difference. The court was not persuaded that Conti J erred in holding that MCP infringed the Trade Mark. The court also found that the primary judge’s conclusion that MCP infringed ACN’s copyright was virtually inevitable. The court held that the source of the deception and confusion stemmed from the application by MCP of the distinctive calligraphy that is a feature of the Trade Mark to a newspaper title that had until that time been written in an entirely different style of calligraphy.