Trade CATCHWORDS practices - consumer protection - application for interlocutory injunction - publication of cookery books with virtually identical names - differences between tne books - whether prima facie case exists ~- where balance of convenience lies. Trade Practices Act; ss. 52, 87 HAPPY LANDINGS PTY. LIMITED, ROSS HORNE, TONT BOBBIN v. MAGAZINE PROMOTIONS AUSTRALIA PTY. LIMITED G 124 of 1984 LOCKHART J. 4 MAY 1984 SYDNEY IN THE FEDERAL COURT OF AUSTRLAIA J NEW SOUTH WALES DISTRICT REGISTRY | Ne. Gite of ised GENERAL DIVISION BETWEEN : HAPPY LANDINGS PTY. LIMITED First Appiicant RGSS HORNE Second Applicant TONT BOSe TY Third Applicant AND: MAGAZINE PROMOTIONS AUSTRALIA PTY. LIMITED Respondent CORAM: LOCKHART J. 4 May 1984 Svdney _ ORDER THE COURT ORDERS THAT: 1) the motion for interlocutory injunctive celief be dismissed; 2) the costs of the motion be the respondent's costs in the proceeding. EU THE FEDERAL COURT OF AUS TE (7 HI t HER SOUTH WALES DISTRICT PEGISTRY | te. 3S 124 or i9A SENERAL DIVTE Dt , BETWEEN : HAPPY LANDINGS FIY. LIMITED First Applicant ROSS HORNE Second Applicant TOUT BOBBIN Third Applicant AND: MAGAZINE PROMOTIONS AUSTRALIA PLY. LIMITED Respondent Coram: Lockhart J. 4 May 1984 Sydney REASONS FOR JUOGMENT LOCKHART J. This is a motion for interlocutory injunctions by Happy Landings Pty. Limited, the publisher, and Ross Horne and Toni Bobbin, the authors, of a cookery book entitled The Health Revolution Cooltbook. to restrain the respondent, Maqazine Promotions Australia Pty. Limited from publishing, distributing, selling and promoting the sale of 1ts own cookery book entitled The Healthy Revolution Cookbook. The applicants assert that the 'O respondent is engaging in misleading or deceptive conduct or conduct that 15 likely to misleaa or aeceive in contravention cot 3. 52, paras. S53(c) and (d) and s. 55 or the Trage Practices Act, 1974, « The facts are not in aisoute. mappy Landings Fur. TT wy o Iiy q 1) °o ¢c ee om <n ray be Oy tu - Limited ("Happy Landings'! was incornor 3 1) Ww a my uw w G we rm w py iy> = ns aL oO Lay a a b t? ot re) 1D 1982 and carries on bus managing airector or. and the majority shareholder in. Hanpy Landings. Mrs. Bobbin helds shares in Happy Landings. Mr. Horne 13 the author of books éntitled The Health Pevolution. anc The New Health Revolution and, as I have said, is the co-author with Mrs. Bobbin of The Health Revclution Cookbook which is the cookery book the cubject of the present proceedings. Mr. Horne published his First book, The Health Revolution, in 1981. Happy Landings first published the books entitled The New Health Revolution and The Health Pevolution Cookbook in August 1983. {£ shall for convenience rerer to Happy Landings' The Health Revolution Cookbcok as "the applicants cookery book". The applicants cookery book and the other pooks ta which I have referred have been extensively advertised and promoted throughout Australia and New Zealand undér tneir cespective titles since their publication. The advertising and promotion has taken and continues to take various forms includine display of the books at newsagencies, bookshops, department stores and health rood shops. The books have been featured on various best seller lists and promotea on televizion and caaic and by the daily press ana trade iournals. Mr. Herne has given public lectures throughout Australia on the topics oF dist ana tna nealth. de has also peen interviewed on radio and teieviczon acd on occasions together witn Mrs. bBepnin. Tne televizic: programmes include programmes known as "The Mike Waish Show". "WMillesee At Seven", "Eleven 4M" ana "Gooa Morning Austrailia'. During the radio and television interviews involvind Mr. Horne he has been introduced as the author of The Health Revolution, The New Health Revolution and The Health Revolution Cookbook; and both the interviewer and Mr. Horne durina those interviews referred to those books by their respective titles. Similarly, during radio programmes those books have been referred to by their titles. Each of the three books published ky the applicants has enjoyed strong sales through newsagencies, bookshops and department stores from 1981 to the present time. About 25,000 copies of The Health Revolution have been sold in Australia and New Zealand; about 45,000 copies ot The Healrn Revolution Cookbook have been sold since August 1983 ur Australia and New Zealand and about 50,000 copies of The New Health Revolution have been sold there. About 50 per cent of the sales of The Mew Heaith Revolution and the applicants cookery book are maae in newsagencies and about 50 per cent in bookshops and other outlets. There is some evidence which points to a sitiahtiy different catio but I prefer the evidence which I have wise ir) a rhts 1D ww " ee Uv ry ct » D al ' 's Dp 1B mentioned. There 15 a continuing mack a5S hyfe) oO pn "S i?) a fu P fam a} n rR oO o n i) Fh et iP) am pookc oL the applicants The re three poeoks are as rollows: The Heaith Revolution in nara ccver £14.35 and in sors cover 23.32. The New Healtn Pevoiuricn fe. 37 and the applicants cookery pook 35.95. The applicants cookery book contains recines which purport to use the nutritional information contained in the pooKxs The Health Revolution and The New Health Revolution and are said to be designed to improve dietary habits. The respondent publishes a wide variety of magazines, including Woman's Day, Dolly, Cosmorolitan., Good Housekeeping and Omeqa. The respondent intended late in 1982 to publish a cookery book and took steps to do so. The editorial portion of the pook was written by Miss Jane Barnes who also composed the recipes. Miss Barnes is a dietician. The name for the respondent s cookery book was selected in mid or late 1982? as The Healthy Revolution Cookbook. I shall refer to 1t as the respondent = cookery book. It is what is called by the respondent 4 "special ive) project" book and was produced in 1984. It went on sale on april 1984. About 65.000 copies were distributed to newsagents throughout Australia during the preceding week and it 1c stocked by about 6.000 newsagents in Australia, representing about 95 per cent of all newsagents. There are no retail outlets for the respondent's cookery book other than newsaqgencies. About 15.000 copies have been retained by the respondent for further orders and to meet any overseas requirements if they arise. The respondent s cookery book has been advertised principally in its rc) own magazines and by posters distciputec t2 ewsagent tu The applicants arqued that by reason of the respondent' oO hy conduct in distributing, selling ana promoting its cookery bo oO under the title The Healthv Revolution Cookbook, mempers of th public have been misled or deceived into believing ana will continue to be misled or deceived into believing: (a) that the respondent's cookery book 1s the applicants' cookery book; 'b) that the respondent's cookery boak is a sequel to or a zerialised or maqazine version or a "spin orf" of the applicant's cookery book: or (co) that the applicants sponsor or approve the respondent': cookery book, are 1n some way connected in the course of trade with that publication, are affiliated with the respondent, or have some business connection with 1% or approve of it. A considerable body of evidence, principally D7 affidavit, was given before me, including avidence relating to knowledge of members of the public with respect to both publications. Ultimately. it ais for the Court ta determine LOY whether the respondent's conduct contravenes the consumer protection provisions of the Trade Practices Act, and the evidence of attitudes or views of members of the pupiic in the present case 1s of limited assistance. ue I am not. of course, finally aecidaing the issues in this case, [ am considerine whether there 12 a teriously arguaci= question to be tried at the iinal hearing or, af 1% 13 somecimes said, whether a prima facie case has been establisned., and the related question of where the nalance of convenience lies. The tests have been formulated in various ways im many cases, ana I need not elaborate them here. The applicants' cookery book 15 the third in a series of books relating to dietary matters. It 15 a small soft-covered book. The basic colour of the front cover of the book is red with white print. The front cover plainly bears the name The Health Revolution Cookbook together with the names of the authors Mr. Horne and Mrs. Bobbin, and 1t states that it incorporates "Pritikin and Gerson (Anti-Cancer) Diets". It also contains a statement "Diet is the Answer" together with certain other printed material. The name The Health Pevolution Cookbook and the names of Mr. Horne and Mrs. Bobbin also appear on the outside spine of the book. The respondent's cookery book 15 very different in cize to the applicant's cookery book. It to my eye 1s akin toa magazine rather than a book in the usual sense, and it 12 essentially the same size and of not dissimilar thickness to som mm of the magazines published by the respondent including Womans Day. The cover of the respondent's cookery bock 1s aiso of generally similar appearance to some or its publications including Womans Day, although, of ftourse, tne wrlting inscribed on 10 18 aifferent. The respondent': ccokerzy pook bears in slain type the words "The Healthy Revolution Cookbock", the woras "The Healthy ... Cookbook" being blue in colour and the word "Revolution" being red. Also, beside the word "The" appears in white print with red surrounds the words "WNomans Day". The name of the author, Jane Barnes, also appears on the front cover. Nothing appears on the spine of the cover. Immaterial matter appears on the back cover. The applicants' case is based essentially on the close correspondence, indeed virtual aidentity, of the two names of the two cookery books in suit. I should mention, however, that there are other publications which use the word "revolution" in coniunction with the word "diet", though I need not refer to them in detail. The words "health" or "healthy" and "revolution" are ordinary English words. Their use in relation to matters of diet or health is not surprising because there 1s evidence that what some describe as "the health revolution" started some years ago and that both publications are intended to express the "rvevolutionary" thinking generated initially by others. The words "health revolution" (I draw no distinction between those words and the words "healthy revolution") are common and descriptive of the subject matter. It was submitted by the applicants that che words "health _ revolution" have acauired a secondary meaning, Lu digtinctive of the applicants' publications including its cocKxery book. Whether this 15 proved to be 30 at the final hearing 12 4 matter on which I offer no comment, #xc2pt to savy thar IT am nor, for present purposes, satisfied that this 15 co; out © dco ner suagest that the point is not arquable. The applicants point in particular to a section or the public which they say exists. comprising people vho have not yet seen the applicants' cookery book, but have heard abour 1t or read of ait. and who, when asking for 1t by name in the shops, particularly newsagencies, would assume if they saw it there or were handed it there that 1t was the one they were seekind, even if it be in fact the respondent's cookery book. Notwithstanding the correspondence between or virtual 1dentityv of the names of the two cookery books, and the fact that each 1s a cookery book essentially containing recipes that purport to improve health by dietary means, there are substantial differences between the two publications. I have already touched on some of them. The presence of the words "Womans Dav" on the front cover or the respondent's cookery book 1s important. There was some debate about whether those vords comprised part of the ticzle iq to the respondent's cookery book or not. deo not think that this matters. The fact 1s that the words are there, wnether par of the book's title or not and they plainl: identity the rr « respondent's cookery boak as aaringd an aAsscctlatLir Ltn thy magazine Womans Day. The respendent 7 ro0rer7 t-ck Lt basicaliy a magazins and ais different from the applicants' cookery book in s174, shape, general gqget-up and format. The front cover of each publication, I think, 18 important for present purposes, and they are essentially different notwithstanding the use of virtually identical names. I shall say something about the contents or the publications. although I do not think this 15 the critical matter on which the case turns at this stage. They are, of course, the same in the sense that in the main they poth comprise recipes that purport to be conscious of health. But the applicants cookery book is a rather subdued recitation of the basic principles of the two diets incorporated in it namely, those of Mr. Pritikin and Dr. Gerson; whereas the recipes appearina in che respondent's cookery book are a rather glossy presentation of recipes and photographs preceded py a brief refer to certain 1D nc a 'Q dietary principles and a cooking method called "froilin Although the applicants case 15 plainly not unarquable, 1t 1s not, in my view, a strong case. Ther? 1s a considerable onpody of evidence touching the question of the difficulties -shich would confront the respondent ut 1t were tO be restrained trom further publishing, distriputing, selling or advertising ifs rcooKery boon. I do not propose to rerer to this evidence ain detail Ic celates essentially to the method of sale ofr the resoo Q oO a ct toy o Oo oO a 1D ss ted book, the difficulties of recalling copies or 1t from newsagents, and problems associateaqd with changing pages in its 'various magazines which advertise it. The applicants' case 15, amongst other things, that if interlocutory relief 15 cefused 1t may surfer reauction in sales of its cookery book, and may afford an opportunity during the passage of time between now and the final hearing for the cespondent's cookery book to acquire a reputation in the mind of the public which may injure the applicants. The applicants also assert that any inconvenience or loss that may be suffered by the respondent if interlocutory relief is granted is really of its own making, because the circumstances which 1t relies on as constituting prejudice if a injunctions are granted arose principally from the respondent own acts and after notice was given to the respondent of the applicants' claims. Tam satisfied that there would be practical problems Tacing the respondent if interlocutory ceilef were <2 pe grantec against it, and that the balance of convenience points to the refusal of such relief. When I add to that conclusion my view previously exeressed as to the strenagtn of The appriltants 2282 - am satisfied taat interlocutory ¢c2i1ef iacuLi ce cefusec. I think. nowever, there should be an early final hearirg or the matter, and that directions to that ena snould be given as 5s00n as possible. The respondent seeks an order that the applicants pay 1ts costs of this motion for interlocutory relief, Thea (1D applicants have submitted that the proper order for costs is that they be costs in the proceeding. In my opinion the proper order is that the costs of the motion for interlocutory injunctive relief be the respondent's costs in the proceeding. Accordingly the orders of the court are: 1) that the motion for interlocutory injunctive relief be dismissed; 2) that the costs of the motion be the respondent's costs in the proceeding.