FEDERAL COURT OF AUSTRALIA
Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104
TRADE MARKS – whether respondent’s mark is deceptively similar to applicant’s mark – question of fact and matter of impression – whether expert evidence is admissible on such matters of impression – weight to be given to such evidence – unusual syntax in applicant’s mark an essential part of that mark’s capacity to distinguish the applicant’s goods – respondent’s mark lacking that unusual syntax not deceptively similar.
TRADE PRACTICES – Trade Practices Act 1975 (Cth) – s 53 claim subsumed in s 52 claim – the Court must consider the whole of the respondent’s conduct – respondent’s conduct, considered as a whole, likely to mislead or deceive consumers.
Trade Marks Act 1995 (Cth)
Trade Practices Act 1974 (Cth) ss 52, 53
Anheuser-Busch Inc v Budejovicky Budvar (2002) AIPC 91 – 789 applied
Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 applied
Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353 applied
Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45 cited
Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107 cited
de Cordova v Vick Chemical Co (1951) 68 RPC 103 cited
MID Sydney Pty Limited v Australian Tourism Co Ltd (1998) 90 FCR 236 cited
Parker-Knoll Ltd v Knoll International Ltd [1961] RPC 346 cited
Pianotist Company’s Application (1906) 23 RPC 774 cited
Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 applied
S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd (1998) 88 FCR 354 cited
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 cited
Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 cited
Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 49 FCR 89 citedPACIFIC PUBLICATIONS PTY LIMITED v IPC MEDIA PTY LIMITED
NO. N 1277 OF 2002
BEAUMONT J
24 FEBRUARY 2003
SYDNEY
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
N 1277 OF 2002
BETWEEN:
PACIFIC PUBLICATIONS PTY LIMITED
APPLICANTAND:
IPC MEDIA PTY LIMITED
RESPONDENTJUDGE:
BEAUMONT J
DATE OF ORDER:
24 FEBRUARY 2003
WHERE MADE:
SYDNEY
THE COURT ORDERS THAT:
1.Dismiss the applicant’s claims for trade mark infringements.
2.Declare that the respondent’s conduct in publishing its November 2002 (“Summer 2002/3”) edition of “25 BEAUTIFUL HOMES” contravened s 52 of the Trade Practices Act 1974 (Cth). Reserve liberty to the applicant to apply for further relief in this connection (including any claim for injunction, damages or loss of profits) on such notice (if any) as a Judge of the Court may allow.
3.No order for costs.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
N 1277 OF 2002
BETWEEN:
PACIFIC PUBLICATIONS PTY LIMITED
APPLICANTAND:
IPC MEDIA PTY…
Continue reading Pacific Publications Pty Ltd v IPC Media Pty Ltd
Sign in free to access the full text
Details
- AGLC
- Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104
- Case
- [2003] FCA 104
- Decision Date
CaseChat Overview and Summary
Pacific Publications Pty Ltd, the publisher of the magazine "HOME BEAUTIFUL", brought a case against IPC Media Pty Ltd for trade mark infringement and passing off. IPC Media had launched a new magazine titled "25 BEAUTIFUL HOMES". Pacific Publications claimed that this title was deceptively similar to its own, likely to cause confusion among consumers, and amounted to a passing off of IPC Media's product as Pacific Publication's. IPC Media argued that the titles were distinct and that there was no intention to cause confusion.
The court considered whether IPC Media's use of the title "25 BEAUTIFUL HOMES" was deceptively similar to Pacific Publication's "HOME BEAUTIFUL", and if so, whether this was likely to deceive or cause confusion. The court noted that both magazines targeted the same market segment of homemakers with above-average disposable incomes interested in home design and decoration. The similarities in target audience, pricing, and content positioning heightened the risk of consumer confusion. The court also examined IPC Media's marketing strategies and the evidence of intentionality behind their magazine's launch.
The court concluded that IPC Media's title "25 BEAUTIFUL HOMES" was deceptively similar to "HOME BEAUTIFUL", likely to deceive or cause confusion among consumers. The similarities in content, marketing strategies, and the intentional targeting of the same market segment supported this conclusion. Consequently, the court found that IPC Media's conduct contravened s 52 of the Trade Practices Act 1974 (Cth) by misleading consumers about the origin of the magazine.
The court dismissed Pacific Publication's claims for trade mark infringement but declared that IPC Media's conduct in publishing its November 2002 edition of "25 BEAUTIFUL HOMES" contravened s 52 of the Trade Practices Act. The court reserved the right for Pacific Publication to apply for further relief, including injunctions, damages, or loss of profits, subject to notice and approval by the court. No order for costs was made.
The court considered whether IPC Media's use of the title "25 BEAUTIFUL HOMES" was deceptively similar to Pacific Publication's "HOME BEAUTIFUL", and if so, whether this was likely to deceive or cause confusion. The court noted that both magazines targeted the same market segment of homemakers with above-average disposable incomes interested in home design and decoration. The similarities in target audience, pricing, and content positioning heightened the risk of consumer confusion. The court also examined IPC Media's marketing strategies and the evidence of intentionality behind their magazine's launch.
The court concluded that IPC Media's title "25 BEAUTIFUL HOMES" was deceptively similar to "HOME BEAUTIFUL", likely to deceive or cause confusion among consumers. The similarities in content, marketing strategies, and the intentional targeting of the same market segment supported this conclusion. Consequently, the court found that IPC Media's conduct contravened s 52 of the Trade Practices Act 1974 (Cth) by misleading consumers about the origin of the magazine.
The court dismissed Pacific Publication's claims for trade mark infringement but declared that IPC Media's conduct in publishing its November 2002 edition of "25 BEAUTIFUL HOMES" contravened s 52 of the Trade Practices Act. The court reserved the right for Pacific Publication to apply for further relief, including injunctions, damages, or loss of profits, subject to notice and approval by the court. No order for costs was made.
Orders
Orders of the court
1. Dismiss the applicant’s claims for trade mark infringements.
2. Declare that the respondent’s conduct in publishing its November 2002 (“Summer 2002/3”) edition of “25 BEAUTIFUL HOMES” contravened s 52 of the Trade Practices Act 1974 (Cth). Reserve liberty to the applicant to apply for further relief in this connection (including any claim for injunction, damages or loss of profits) on such notice (if any) as a Judge of the Court may allow.
3. No order for costs.
Background
Background to the litigation
Full text does not contain this section.
Evidence
Evidence Before The Court
The applicant’s evidence, given by its Chief Executive Officer, Ian Fraser Meikle, and by a marketing consultant, Grahame Robert Dowling, was essentially to the following effect:The evidence of Ian Fraser Meikle In affidavit sworn 2 December 2002, Mr Meikle gave evidence explaining the background facts, which, so far as concerns the primary facts, are not in dispute, as follows:·The applicant’s circulation is such that it is Australia’s second largest magazine publisher. “HOME BEAUTIFUL” is one of its leading magazine titles, having a monthly circulation of about 80,000 copies per issue and a current cover price of $5.90, GST included. Advertising revenue accounts for about one-half of the total revenue received from its publication. The magazine is a significant participant in the homemaker’s magazine market.·“HOME BEAUTIFUL” is marketed to readers with above average disposable incomes who are interested in decorating, designing or renovating their houses.·The magazine’s circulation, advertising revenue and longevity are such that its title “has become exclusively distinctive” within the Australian market; and it has acquired, over the past seventy-seven years, “a substantial reputation and goodwill throughout Australia”.·By reading an advertisement in a trade journal in November 2002, Mr Meikle learned that the respondent proposed to launch an Australian edition of a magazine entitled “25 BEAUTIFUL HOMES”. (A copy of the advertisement is annexed to these reasons. ·On 25 November 2002, Mr Meikle was informed by the respondent that it had been importing into, and circulating within, Australia copies of the British version of “25 BEAUTIFUL HOMES”, which was published primarily to the British market. Because import distribution costs are generally quite high, imported magazines tend to have a small circulation, and the applicant is prepared to “tolerate” limited import sales of this British version. Nonetheless, the launch of a “fully fledged” Australian version of “25 BEAUTIFUL HOMES” is “a matter of grave concern” to the applicant because it is likely to have a much wider circulation than the foreign imported version.·Mr Meikle believes that “the class” of persons who read “HOME BEAUTIFUL” is “basically the same” as those who would read “25 BEAUTIFUL HOMES”. It is common practice in the publishing industry, in order to “trade on” the reputation previously established by particular titles, to publish “one-shots”, a compilation or “best of” style magazine, which “repurpose” or “re-package” the content of the magazine from which they are derived. Mr Meikle believes that “25 BEAUTIFUL HOMES” would be mistaken by readers of “HOME BEAUTIFUL” for a magazine incorporating twenty-five homes featured in previous issues of “HOME BEAUTIFUL”. By his affidavit sworn 4 December 2002, Mr Meikle gave this evidence:·In November 2000, the applicant published a seventy-fifth anniversary birthday issue of “HOME BEAUTIFUL”. A copy of its front page is annexed to these reasons. This issue is an example of the “best of” or “compilation” style of magazine.·In all of its advertising, the applicant refers to “HOME BEAUTIFUL”, and not to “AUSTRALIAN HOME BEAUTIFUL”. The projected amount of expenditure by the applicant on its advertising in this financial year is about $500,000, a figure “consistent” with amounts spent in previous years.·The publication of “HOME BEAUTIFUL” by the applicant and its predecessors in title has been “continuous” since 1925.
Decision
Reasons for decision
BEAUMONT J
Because there was (understandably) no time for either party to carry out any empirical tests here, and because, as will be seen, the adjudication of the present claims are essentially matters for the Court’s impression, even if I were to admit the expert’s views in that area to be admissible (a question I need not now rule upon), I would give those views no more than nominal weight, bearing in mind their “impressionistic” and unscientific method.CONCLUSIONS ON THE TRADE MARKS INFRINGEMENT CLAIMS It will be convenient to consider each of the applicant’s marks in suit in turn.Trade Mark No. 748943 The rights given by the TMA by the registration of a trade mark (“TM”) include the right of the registered owner to obtain relief under the TMA if the TM has been infringed (s 20(2)). Under the TMA, a person infringes a registered TM if the person “uses as a [TM] a sign that is substantially identical with, or deceptively similar to, the [TM] in relation to goods ... in respect of which the TM is registered” (s 120(1)); or in relation to “goods of the same description as that of goods ... in respect of which the [TM] is registered. ... However, the person is not taken to have infringed the [TM] if the person establishes that using the sign as the person did is not likely to deceive or cause confusion” (s 120(2)). For the purposes of the TMA, a TM is taken to be “deceptively similar” to another TM if it “so nearly resembles the other [TM] that it is likely to deceive or cause confusion” (s 10). It will be recalled that the applicant’s claim is that –·The respondent is using as a TM the sign “25 BEAUTIFUL HOMES”.·The sign (a) so nearly resembles the applicant’s TM that it is likely to deceive or cause confusion; and (b) is substantially identical with, or deceptively similar to the applicant’s TM.·The respondent’s magazines are goods in respect of which the applicant’s goods are registered, or of the same description as that of the goods in respect of which the applicant’s TM is registered. It will further be recalled that, although nothing of significance appears to turn on the distinction here, infringement under both s 120(1) and s 120(2) is claimed. However, as I followed the applicant’s argument, the applicant does not now seriously (or perhaps at all) pursue its plea that the respective marks were “substantially identical”. In my opinion, that concession is properly made (see, e.g., Anheuser-Busch Inc v Budejovicky Budvar (2002) AIPC 91 – 789 per Allsop J at [135] – [190]). However, in support of its claims of “deceptive similarity”, the applicant contends:qThe respondent, as it admits in its defence, is using the mark “25 BEAUTIFUL HOMES” as a TM use; that is, the respondent uses the title of its new magazine (to pick up the language of s 17 of the TMA) “to distinguish goods ... dealt with ... in the course of trade by [the respondent] from goods so dealt with ... in the course of trade by any other person”.qThe respondent’s mark is, in terms of s 120(1) “deceptively similar” to the applicant’s mark, because [within s 10] it “so nearly resembles that other [TM] that it is likely to cause confusion” in the sense explained by the High Court in the frequently cited passage in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 608 (in the context of an application for registration under the 1955 Act), that is: “... a real risk that ‘the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source’.” (Emphasis added)qHere, a number of persons would be caused to wonder whether the respondent’s magazine is a “one shot”, or “best of”, compilation of the applicant’s magazine. In making this assessment, the Court should take into account, as was held in MID Sydney Pty Limited v Australian Tourism Co Ltd (1998) 90 FCR 236 at 244 - 247, any “normal and fair use” of the applicant’s mark (see also Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107 at 122), which is unrestricted and covers magazines (Class 16), so that it is within the ambit of that registration for the applicant to publish a “one-shot”, or “best of”, under its TM in order, as Mr Meikle’s evidence indicated, to trade on the reputation previously established by the applicant’s particular title, as is common practice in the industry.qIn assessing whether there is “deceptive similarity”, as was held in the frequently cited passages in Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658, and in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 415, the marks are not compared side by side; rather, an attempt should be made to estimate the effect, or impression, produced on the mind of potential customers by the applicant’s mark, which recollection is necessarily the basis of any mistaken belief that the respondent’s mark is the same, upon the footing that potential buyers are not to be credited with any high perception of habitual caution, whilst exceptional carelessness or stupidity may be disregarded. Here, the applicant’s and the respondent’s goods will each be sold through the same trade channels to consumers in the same “homemaker” market, the principal target being, as Mr Meikle said, readers with high disposable incomes. The respondent’s management so viewed its magazine’s target readership; and its executive team brief on the launch of its magazine stated (Ex E p 2): “Readership-wise, [“25 BEAUTIFUL HOMES”] corresponds with Better Homes & Gardens but most closely with Australian House & Garden and Australian Home Beautiful, who also have a high percentage readership in the AB quintile bracket. Their readers also tend to be older (35 plus) with higher than average incomes ... .”Moreover, the respondent has instructed newsagents to display its magazine between these titles. Both magazines have a similar price point, which is within the range of homemaker magazines offered in Australia.qThe essential idea of the applicant’s mark, that is, of beautiful homes, is conveyed also by the respondent’s title, through the use of almost identical words; and the respondent’s addition of the number “25” is unlikely to be sufficient to distinguish its magazine; rather, it is entirely consistent with the idea of a “one shot”, or other compilation of twenty-five homes chosen from issues of the applicant’s magazine; and the first issue of the respondent’s magazine chose five homes, and reproduces twenty photographs from past issues of the applicant’s magazine. Nor is the mere reversal of the title words likely to prevent confusion in the minds of consumers, assuming “imperfect recollection”.qConsumers’ decisions to purchase these magazines is influenced at the point of sale by a narrowly defined product category, sold at a relatively low cost (allowing scope for impulse-buying), in an environment where a number of products are offered under various names which, although not the same, possess some similarities and convey a similar concept, viz. the design and decoration of homes. In such a market, as Professor Dowling explained, there is potential for a consumer to confuse names, to recall incorrectly a brand name; and a new brand might well capitalise on this by using a name that looks and/or sounds like a more established brand.qThis is what the respondent intended to do here (with as little investment as possible – hence its management’s description of the project as a “breakeven model” and Ms Hayes’ proposal to acquire cheaper secondary usage photographs.qBecause no other Australian magazine combines the words “HOME” and “BEAUTIFUL”, it is no answer for the respondent to contend that there were other magazines on offer for instance, foreign magazines of limited circulation, using “HOME” and/or “BEAUTIFUL” in their titles.qIt should be inferred that the respondent intended that some such association would be perceived by consumers, and, in accordance with the well known observations in Australian Woollen Mills at 657, this provides a “reliable and expert opinion” as to the likely result of the respondent’s acts, the bases for the inference being:oThe change in the respondent’s type face to delete the serif, and to simplify the overall look of the title.oThe absence of any mention of the UK magazine in the editor’s note in the respondent’s first issue, despite the evidence of Ms Mitchell that the use of the name was intended to build on the UK title’s existing reputation.oThe instruction to newsagents to position the respondent’s magazine alongside the applicant’s.oThe decision to publish five stories on homes featured in the applicant’s previous issues of “HOME BEAUTIFUL” and to use the same photographs. Given the close rivalry for readership in the homemaker market, the Court should not accept that this was done in ignorance of the applicant’s previous issues. As Ms Hayes agreed, the expression “secondary usage pictures” in relation to the photographs used by the respondent meant that they had been published elsewhere. Her interpretation of the warning she was given about such usage should not be accepted. Further, Ms Mitchell agreed that readers recall photographs they have seen published elsewhere.oThe respondent’s close focus on “HOME BEAUTIFUL” (amongst other titles in the homemaker market in Australia) as evidenced by the respondent’s documentation of the “Launch Proposal” in particular. These documents reveal intense study by the respondent of the participants in the homemaker market in Australia, including “HOME BEAUTIFUL”, their content position, readership trends over five years, details of frequency of publication, price and circulation; andoThe respondent’s knowledge that its likely readership corresponded most closely with “AUSTRALIAN HOUSE & GARDEN” and “HOME BEAUTIFUL”, and the fact that this was its target market.
Ratio Decidendi
Legal Principle Established
Established by: BEAUMONT J
Full text does not contain this section.