CATCHWORDS 3b Trade Practices - consumer protection - s.52 - rival newspapers of same name - "Sunday Territorian"" - passing off - cross-restraints. PETER ISAACSON PUBLICATIONS PTY. LIMITED v. NATIONWIDE NEWS PTY. LIMITED and NORTHERN TERRITORY NEWS SERVICES PTY. LIMITED No. NTG 33 of 1984 Beaumont, J. 9 November 1984. Sydney. IN THE FEDERAL COURT OF AUSTRALIA NORTHERN TERRITORY DISTRICT REGISTRY ) GENERAL DIVISION BETWEEN : AND. AND: AND: AND: Judge making order: Date order made: Where made: No. NIG 33 of 1984 PETER ISAACSON PUBLICATIONS PTY LIMITED Applicant NATIONWIDE NEWS PTY. LIMITED First respondent NORTHERN TERRITORY NEWS SERVICES PLY. LIMITED Second respondent NATIONWIDE NEWS PTY. LIMITED Cross-claimant PETER ISAACSON PUBLICATIONS PTY. LIMITED Cross-respondent ORDER Beaumont, J. 9 November 1984. Sydney THE COURT ORDERS THAT: 1. The respondents by themselves, their servants and agents be restrained from publishing in the Northern Territory any newspaper under the name "Sunday Territorian" without clearly distinguishing that newspaper from the newspaper of that name published by the applicant. 2. The cross-respondent by itself, its servants and agents be restrained from publishing in the Northern Territory any newspaper under the name "Sunday Territorian" without clearly distinguishing that newspaper from the newspaper of that name published by the cross-claimant. 3. Reserve liberty to any party to apply for further or other relief, if necessary, on 5 days' notice. 4. Make no order as to costs. IN THE FEDERAL COURT OF AUSTRALIA } NORTHERN TERRITORY DISTRICT REGISTRY ) ne GENERAL DIVISION No. NIG 33 of 1984 BETWEEN PETER ISAACSON PUBLICATIONS ——— PYYVLINITED" —————— Applicant AND. NATIONWIDE NEWS PLY. LIMITED First respondent AND: NORTHERN TERRITORY NEWS SERVICES PrY. LIMIT Second respondent AND NATIONWIDE NEWS PTY. LIMITED Cross-claimant AND: PETER ISAACSON PUBLICATIONS Cross-respondent CORAM. Beaumont, J. DATED: 9 November 1984. REASONS FOR JUDGMENT These are cross applications by rival newspaper proprietors seeking injunctive and other relief arising out of the use by each of them of the name "Sunday Territorian" as the name of the Sunday newspapers they now publish in the Northern Territory. Section 52 of the Trade Practices Act, 1974 ("the Act") and the general law of passing off are invoked by both sides. Specifically, the applicant seeks an injunction to restrain the respondents from distributing in the Territory any publication under the name "Sunday Territorian" or any similar name. Damages are also claimed. For its part, the first respondent, as cross-claimant, seeks similar injunctive and other relief against the applicant as cross-respondent. There is no dispute about the facts leading up to the impasse which has occurred. For some years, the respondents, as members of the News Limited group of companies, have been considering the possibility of publishing a Sunday newspaper in the Territory. The second respondent already publishes a daily (other than Sunday) newspaper in the Territory under the name "Northern Territory News". (Although of little significance to the issues now raised for determination, mention should also be made of the fact that, in the 1960's, the second respondent published in the Territory a bi-monthly publication under the name "The Territorian"". It was registered for transmission by post as a periodical. It was not a Sunday newspaper and could not reasonably be expected to be confused with either of the publications the subject of this litigation at least so far as content is concerned.) From the middle of 1983, executives of the News Limited group examined the feasibility of the publication in the Territory of a Sunday newspaper. Consideration was given to the expansion of existing production facilities to permit the production in Darwin of such a newspaper. In early 1984 it was decided, in principle, to proceed with the proposal. To that end, at this time, an appropriate "front end" editorial copy processing system was selected in the hope of avoiding the industrial troubles which otherwise might confront the News Limited group in maintaining a seventh shift. John Edmund Hogan, a director of the respondents and their managing editor, was mainly responsible for the decision to launch a Sunday newspaper. In about March 1984, Mr. Hogan hit upon the idea of using the name "Sunday Territorian" for the proposed publication. In June 1984, Mr. Hogan retained an advertising agent to act for the respondents on the launch of the "Sunday Territorian". Mr. Hogan mentioned this name to the agent as the name he had in mind but said that he was willing to consider alternative names. In the same month, Mr. Hogan arranged for a search to be carried out in the office of the Registrar of Companies as to the availability of the name for the purposes of the Business Names Act (N.T.). His staff reported back that the Registrar was of the view that the name was unavailable by reason of its similarity to the registered business names "Territory Sunday Telegraph" and "Territory Sunday Times". Mr. Hogan then instructed the respondents' solicitors to look into the matter. In July 1984, the solicitors were given the same negative response by the Registrar. Reference should now be made to the concurrent activities of the applicant and its predecessors. The history begins with action taken by Patrick James Cusick, now the managing editor of the applicant's "Sunday Territorian". Prior to his employment by the Isaacson group of companies, Mr. Cusick was employed by Times Publishing Pty. Limited ("Times Publishing"), the publisher of two Territory newspapers, "The Alice Springs Star" and "The Darwin Advertiser". Mr. Cusick was the managing editor of the latter publication. Times Publishing was then a company controlled by Cedric Chin. At the time, Mr. Chin was also considering publication of a Sunday newspaper in the Territory. In April 1984, Mr. Cusick selected the name "Sunday Territorian" as suitable for a Sunday newspaper then proposed to be published in the Territory by Times Publishing. In late April 1984, Mr. Cusick made his own enquiries of the Registrar of Companies as to _ the 5. availability of the name "Sunday Territorian" under the Business Names Act. On 1 May 1984, he also received a negative response from the Registrar, for the reasons already mentioned. Later in May, Mr. Cusick informed Mr. J.W. Shrimpton of A.A.P. Information Services Pty. Limited, a company engaged in the supply of national and overseas news to newspapers throughout Australia, that he was to become editor of a newspaper to be published in Darwin to be called the "Sunday Territorian". On 10 July 1984, on the front page of "The Alice Springs Star", an article announced that, as from August 1984, Times Publishing would produce a Sunday newspaper which would be available in all Territory centres on Sunday morning well before the southern newspapers arrive on Sunday afternoon. Mr. Cusick was quoted as saying that the owners of the new newspaper had not then decided on the exact date for the first edition and that a name for the paper had yet to be chosen. The article stated that the new paper would have "two liftout feature sections - Sunday Territorian, a business and consumers (sic.) guide, and Territory Wide, a rural-based features section". On the following day, 11 July 1984, Alan Markhan, an advertising manager employed by the respondents, informed Thomas Booler, an executive of Lend Lease Investments Limited, the owner of a large retail shopping complex in a Darwin suburb, of the respondents' proposal to publish a Sunday newspaper. When asked the name of the newspaper, Mr. Markham responded: "We have decided to call it the 'Sunday Territorian' but keep it between these four walls because we haven't yet announced it in Darwin to any retail outlets." On 18 July, Mr. Hogan informed Peter Charlton of the advertising agency, McCann-Erikson Advertising Pty. Limited, of the respondents' intention to publish a newspaper to be called "Sunday Territorian". The communication was said to be in the "strictest confidence". Later in July 1984, the applicant negotiated with Mr. Chin and other interested parties for the acquisition of "The Darwin Advertiser" and "The Alice Springs Star". Agreement for sale and purchase was reached in the first week of August. The earlier proposal to publish a Sunday newspaper was maintained by the new management. Mr. Cusick was retained as managing editor of the new newspaper. Although its name was not settled upon, the applicant's new management referred to it as the "Sunday Advertiser". In the course of the negotiations for the acquisitions of "The Darwin Advertiser" and "The Alice Aprings Star", Mr. Cusick represented to Leigh Garwood, one of the applicant's executives, that he had reserved the name "Sunday Territorian". (Nothing would appear to turn on this, but, to take a benevolent view of the assertion, it is possible to say that Mr. Cusick's confidence on this score was perhaps based on the expectation that he could achieve registration of the name by procuring the consent to registration of "Sunday Territorian" from Times Publishing as the proprietors of the registered business names "Territory Sunday Telegraph" and "Territory Sunday Times", since it was proximity to these names which concerned the Registrar.) In the meantime, pursuant to instructions given by Mr. Hogan in early July, the respondents' solicitors were making further enquiries of the Registrar of Companies as to the availability of the name "Sunday § Territorian". Eventually, on 16 August 1984, the solicitors informed Mr. Hogan that the name would be permitted for registration under the Business Names Act. Since, for reasons to be given later, registration of the name is, in my view, of no consequence for present purposes, it 18 unnecessary to explore the reasons for the Registrar's volte-face. In any event, no impropriety on the part of the respondents is suggested. In August and September 1984, work continued on the preparation of promotional material for the launch of the Tespondents' "Sunday Territorian". The work was done by 8. Iain Wilson and Associates Pty. Limited, advertising artists. It included an envelope of material marked "top secret". For its part, the applicant, on 21 August 1984, retained Clemenger Harvie Pty. Limited as its advertising agent to prepare material for the launch of the Isaacson Sunday publication, the name of which still had not been finally determined. The implementation of the respondents' plans for publication of "Sunday Territorian" was delayed because of industrial troubles in the last week of August. Notwithstanding this problem, Mr. Markham was. busy sOliciting business. In the last week of August and the first week of September 1984, Mr. Markham called on some 34 advertisers and advertising agents in Adelaide, Melbourne, Sydney and Brisbane. In each case, he distributed a copy of the "top secret" envelope and enclosed material. Approaches were also made to other advertising agents in Melbourne by another News Limited executive, Paul Stephen Burrows. He handed out "Sunday Territorian" calendars and a copy of the "top secret" envelope. Included in that material, which referred throughout to the "Sunday Territorian", was a facsimile edition of the first four pages of the first edition of the paper. Its masthead was as follows: Territorian 10. The applicant was simultaneously engaged in similar activity. For instance, on 30 August 1984, Mr. Garwood wrote to Robert Hill, the National Press Manager, ParPlan, in Sydney, nominating certain media representative companies to sell advertising space for "the Darwin Midweek Advertiser, Darwin Sunday Advertiser and the Alice Springs Star". He said that a full brief of "the new Sunday Advertiser" would be sent shortly thereafter. On 5 September 1984, Messrs. Garwood & Isaacson discussed the selection of a name for the applicant's newspaper. "Sunday Advertiser" and "Sunday Territorian" were considered. At some time on this day, Mr. Isaacson decided in his own mind to adopt the "Sunday Territorian", although he did not communicate his decision to his staff until 6 September. Meanwhile, on 5 September, Mr. Cusick held a press conference in Darwin to announce the launch of the applicant's newspaper on 30 September. Part of the conference was shown on the evening news sessions of both Territory television channels. The news commentary on Channel 8, with an estimated viewing audience of some 42,000, said that the newspaper was not yet named but was likely to be known as the "Sunday Territorian". Channel ABD 6, with an estimated viewing audience of some 11,000, said that the paper had no name at that stage but that, although the "Sunday Advertiser" might be used, Mr. Cusick favoured the "Sunday Territorian". 11. On 6 September, Mr. Garwood informed Mr. Cusick of Mr. Isaacson's choice of name and authorised Mr. Cusick to promote the planned newspaper by that name. On 6 and 10 September, Mr. Cusick was interviewed on ABC radio in Darwin. He said that the newspaper was scheduled for publication on 30 September 1984 under the name "Sunday Territorian". On or about 10 September, Mr. Garwood telephoned Mr. Hill of ParPlan and informed him of the adoption of the name. From 11 September, telexes were sent by the applicant to potential interstate and overseas advertisers informing them that the "Sunday Territorian" would be published on 30 September. In this period also, representatives of the applicant called upon local firms soliciting the sale of advertising space in the "Sunday Territorian". Between 10 and 25 September, the applicant received instructions from 47 advertisers to place advertisements in the first edition of the newspaper. The majority of these advertisers was based in the Territory. On 11 September, Mr. Cusick attended at the office of the Registrar of Companies to discuss his earlier search of the availability of the name "Sunday Territorian". He 12. produced for the consideration of the Registrar a letter dated 10 September 1984 addressed to the Registrar on the letterhead of Times Publishing signed by Mr. Chin and Harry Maschke as directors of that company as follows: "I hereby give permission for Peter Isaacson Publications to register the name Sunday Territorian. Our registered Titles 'Territorian Sunday Times', 'Territorian Sunday Telegraph', do not conflict with 'Sunday Territorian' or with any of our other interest as neither of these Newspapers are being published, at present." On 12 September, the applicant's "Midweek Advertiser" carried a large advertisement in these terms: "COMING SOON SUNDAY TERRITORIAN Order your home delivery today Phone 811044" The telephone number. stated is apparently, ~ operated by the applicant. 13. On 13 September, the applicant distributed to newsagents in the Darwin and Alice Springs regions approximately 1,200 copies of posters advertising its proposed publication. The masthead shown on this material was as follows: 15. The "Midweek Advertiser" dated 19 September carried the following item on its front page: "Sunday not too far away The Sunday Territorian, the first Sunday newspaper in the Northern Territory, will be published on September 30. As well as being sold in newsagents and outlets throughout the Territory, there will be a complimentary door-to-door distribuution of 18 500 copies to Darwin residences for the first edition. The Sunday Territorian will be similar to other popular Sunday papers in southern capitals, but will carry stories and features specially related to the Territory and Darwin. An extensive publicity campaign is underway to promote the Sunday Territorian and the home delivery service. Next week there will be extensive television and radio advertising. The Sunday Territorian will obtain a readership unsurpassed in the history of newspapers in Darwin. Readers will also be eligible for a $1000 cash prize. Sunday will be so much better with a home-delivered Sunday Territorian." In the following weeks the applicant embarked upon a substantial advertising campaign for its new product. Material referring to the "Sunday Territorian" was delivered to Darwin newsagents and posters were dropped into the 16. letter boxes of some 18,000 residents of Darwin. Extensive radio and television coverage was secured. Meanwhile, the respondents were gearing up for their publication. On 25 September, a news item on a local radio station reported that "the Isaacson group's 'Sunday Territorian'" would have opposition in the form of "the Murdoch group('s) ... own Sunday issue". Shortly before 25 September, the respondents were informed by the Registrar, confirming earlier apparently oral advice, that the name "Sunday Territorian" was now available for registration under the Business Names Act. On or about 24 September, Alistair Michael Bailey, the agent of the first respondent in the Territory, applied for that registration. On 25 September, registration was achieved. By letter of that date received on 26 September, the first respondent, by Mr. Hogan, wrote to the applicant: "RE: SUNDAY TERRITORIAN I note with concern that your company proposes publishing @ newspaper under the masthead The Sunday Territorian. As this company is the registered owner of the business name Sunday Territorian I request that you advise me this day that you do not intend to proceed with the publication of a newspaper of that nane. 17. It is regretted that circumstances beyond our control have prevented this information being conveyed to you before today. I look forward to your reply by close of business." The applicant did not respond to this letter. It continued its advertising campaign using the name "Sunday Territorian". It continued to announce that the first edition would be published on 30 September. A national advertising, marketing and media weekly, "b & t", in its edition dated 28 September reported on its front page that the applicant would be publishing the "Sunday Territorian" as from 30 September. Details of format, content and distribution were given. The parties then turned to litigation. On 28 September, the first respondent moved in the Supreme Court of the Territory to enjoin the applicant from allegedly passing off its goods as those of the first respondent. An application for interim relief was refused. On the same day, the applicant initiated these proceedings. An application for an interlocutory injunction was heard by Forster, J. in the first week of October. His Honour 18. declined to grant that relief. The applicant appealed to a Full Court. On the opening of the appeal, the applicant indicated its willingness to proceed to an expedited final hearing. The appeal was stood over generally on that footing. On Sunday, 30 September, the applicant's "Sunday Territorian" was first published. Some 25,000 copies were printed. Approximately 20,000 copies were handed out free and some 4,000 were sold in Darwin. The balance was sold in other parts of the Territory. The price was 504. 'The masthead was as foreshadowed in the promotional material. In the first week of October, the respondents responded by opening an advertising campaign for their "Sunday Territorian". They advertised on radio and in "The Northern Territory News" that publication would commence on Sunday, 7 October. On that day, 32,000 copies of the respondents' "Sunday Territorian" were printed. Some 30,000 were distributed free. On the same day, the applicant printed 12,000 copies of its "Sunday Territorian". It sold some 6,000 copies. The respondents' masthead, again, was ag foreshadowed in the promotional material. 19. Each publication has continued to appear on successive Sundays. The price of the applicant's newspaper remains at 50¢. To date, the respondents' product has been distributed free but, as from 11 November, a price of 404 will be charged. Each publication could fairly be described as a Sunday newspaper. Each contains a mixture of news, editorial comment and advertising. The publications circulate in the same market. It is convenient to consider first the applicant's claim for injunctive relief based on s.52 of the Act. The test to be applied in this connection was recently explained by the Full Court of this Court in Global Sportsman Limited v. Mirror Newspapers Limited (1984) A.T.P.R. para.40-463 at p-45,343: "A contravention of sub-s. 52 (1) 18 established by conduct which is misleading or deceptive or which is likely to mislead or deceive. Conduct is likely to mislead or deceive if that is a treal or not remote chance or possibility regardless of whether it is less or more than fifty per cent': cf. Tillmanns Butcheries Pty Ltd Vv. Australasian Meat Industr Employees' Union (1079) 42 F.L.R. 331, per boane J. at - 346; Sheen v. Fields Pty ltd (1984) 58 A.L.J.R. 93. Bvidence that an erroneous conclusion has been formed by reference to conduct is admissible to establish that the conduct was misleading or deceptive or likely to mislead or deceive; such evidence may be persuasive but it is not essential. Evidence of acts or omissions resulting 20. from the erroneous belief may also be admissible but again is not essential. Sub-section 52 (1) is concerned with the effect or likely effect of conduct upon the minds of those by reference to whom the question of whether the conduct is or is likely to be misleading or deceptive falls to be tested. The test is objective and the Court must determine the question for itself: Taco Company of Australia Inc. v. Taco Bell Pty Tet (id82) FS A-L-R. 177, at p-20e." In order to succeed on the cause of action based on 8.52, the applicant must establish that the use by the respondents of the name "Sunday Territorian" is conduct on their part which amounts to a misrepresentation to the public or a section thereof that the newspaper published by the respondents is either the applicant's newspaper or is connected with the applicant in some way. Only then will it be established that it is threatening to engage in conduct which would be misleading or deceptive. The question is one of fact. It is to be determined by the Court objectively, notwithstanding that evidence from persons who say that they have been misled or have not been misled, as the case may be, could provide guidance as to what the outcome of the case should be (see Bridges v. Bridge Stockbrokers Limited, unreported, Sheppard, J., 18 July 1984 at pp.25-6). The applicant could adduce only limited evidence of confusion on the part of members of the public. Desmond John Williams, a proprietor of a large Darwin newsagency, 21. himself able to distinguish between the rival publications, gave evidence of an incident witnessed by him in a grocery store on Sunday, 21 October: "4. On the afternoon of Sunday 21st October 1984, I was at the grocery store in the old Malak Shopping Centre, Derwin in the Northern Territory. 5. I had just taken some goods off the .shelf and was standing approximately three back in the queue to be served at the checkout point. 6. I saw a woman who was purchasing goods and paying for them at the - checkout point pick up a copy of the Respondent's 'Sunday Territorian'. 7. j%She then folded the newspaper in half and, while showing the top half of the front page to the woman who was working the cash register said 'I'll have one of these'. 8. The first at the cash register said 'That will be 50 cents'. I then said to her 'No it's not, it's free. the other one is 50 cents'." In cross-examination, Mr. Williams said that he was not aware of any confusion in customers in his own newsagency. He instructed his staff to ensure that customers understood that one of the two "Sunday Territorian" publications was distributed free of charge. (As has been said, a price of 40¢ for that newspaper will become payable as from 11 November.) 22. The applicant also read affidavits of Pauline Bilokur and Carmel Mary Thomas sworn 29 October. Each was then aware of the existence of both publications of the same name. They said that they found it "difficult" and "extremely difficult" respectively to distinguish between the two newspapers. Neither witness was cross-examined. On the other hand, the respondents read affidavits by Eric Fleay, Rosemary Hosking and Ian Bailey, each sworn 21 October 1984, deposing that, whilst they were aware that two newspaper groups were publishing a newspaper called "Sunday Territorian", they could distinguish between them by looking at them. The respondents also read affidavits by Anthony John Macmichael and Maurice John Moore, each sworn 4 October 1984 and by Norma Catherine Pitcheneder sworn 18 October and by Ian Jones sworn 19 October. Each witness recalled the earlier bi-monthly periodical "The Territorian", publication of which ceased in about 1967. When these witnesses first heard of a proposal to publish the "Sunday Territorian", they assumed that the publication would have some connection with the second respondent, the publisher of "Northern Territory News". None of these witnesses was cross-examined. In my opinion, little assistance is to be obtained from the evidence tendered on the issue of confusion. For one thing, only a short period has elapsed since publication 23. first commenced of either newspaper. There has been insufficient time for any settled behaviour pattern to emerge, if this is to happen. More significant, potential confusion between the competing products would have been largely avoided up to this point by the circumstance that the respondents' product has, to date, been distributed free. But as from next Sunday, residents of the Territory will somehow have to distinguish between two rival publications of identical name, of similar content and price, and aimed at the same market. True it is that some consumers, by reason of knowledge peculiar to themselves, such as their recall of "The Territorian", will be able to discern the different publishers of the two newspapers. But, in my opinion, the majority of consumers will be likely to be misled as to the source of the respective products (cf. Neylan v. Toison Holdings Pty. Limited (1983) 1 Qd.R. 600). It may well be that, in some cases, those involved at the point of sale or point of distribution of the newspapers will take pains to distinguish between them. Yet, at least the potential to be misled exists. And since the respondents could not be held responsible under s.52 for any misleading statement about their product made by the sales staff of a distributor (see 24. Parkdale Custom Built Furniture Pty. Limited v. Puxu_ Pty. Limited (1982) 149 C.L.R. 191), it can be no answer to a contravention of s.52 on the part of the respondents to hope that the sales staff will be able to eliminate the likelihood of deception. It may be accepted that there are some differences in the get-up of the mastheads employed by the parties. But, where the name of the respective products, type of product and the market chosen for the product is the same in each case, and their price and content are similar, differences in get-up assume little significance. The propensity to mislead innocent consumers must be overwhelming. In my opinion, the use by the respondents of the name "Sunday Territorian" is conduct which is likely to mislead within the meaning of s.52. It is not merely a case of causing people to be "confused" or "to wonder whether two products may have come from the same source" or conduct which "merely causes some uncertainty in the minds of relevant members of the public" (cf. Puxu per Gibbs, C.J. at p-198 and per Mason, J. at p.210). Nor, in my view, is the name "Sunday Territorian" a descriptive name: in the present context, "Sunday Territorian" is an invented name (ef. Hornsby Building Information Centre Pty. Limited v. Sydney Building Information Centre (1978) 140 C.L.R. 216; 25. see reharge Pty. Limited v. Motorcard Pty. Limited (1982) 42 A.L.R. 136). By electing to use the same name as that already used by the applicant in connection with its product, the respondents are likely to mislead consumers into the false belief that their publication is associated with the applicant's product. It was rightly not suggested by the respondents that registration under the Business Names Act could constitute a defence to conduct engaged in in contravention of 8.52 (see B.M. Auto Sales Pty. Limited v. Budget Rent a Car System Pty. Limited (1976) 12 A.L.R. 363; 51 A.L.d-R. 254). However, the respondents did contend that they had established a reputation in the name "Sunday Territorian" sufficient to ground an action in passing off against the applicant. If that were the case then, of course, the respondents would not have committed any contravention of s.52: to the contrary, it would have been the applicant who had offended. But, in my view, the respondents were unable to establish any such reputation as at 30 September, the date of first publication of the applicant's newspaper. Certainly, by that stage, the respondents had communicated their intentions to publish a "Sunday Territorian" on a confidential basis to some advertising agents. Also, immediately prior to 30 September, the respondents had 26. publicly stated their plans in their application to the Supreme Court. But even if it be accepted that "pre-launch" publicity can, in special cases, generate goodwill (see W.H. Allen & Co. v. Brown Watson Limited (1965) R.P.C. 191; The British Broadcasting Corporation v. Talbot Motor Company Limited (1981) F.S.R. 228: Kinda Bones Limited v. Dr. Pepper's Stove Co. Limited (1984) F.S.R. 289), it could not be suggested that the evidence here makes out such a case. The evidence falls far short of establishing an exclusive goodwill in the name "Sunday fTerritorian" in the respondents, even in the minds of those engaged in the advertising and media industry. The undisputed facts are that both sides communicated their respective intentions, on a pre-launch footing, to different sectors of the service industry involved. It is thus impossible to ascribe to the respondents an exclusive goodwill or reputation in the name "Sunday Territorian" at the "pre-launch" stage or, for that matter, at any later stage. In the result, when on 7 October the respondents published their newspaper under the name "Sunday Territorian", they could claim no exclusive reputation in the name. Since, prior to this time, the applicant had also published under that name, it follows that the respondents 27. were, by publishing under the same name, representing to the public at least a connection between the two papers which was likely to be misleading. I find a contravention of 8.52 accordingly. Before turning to the relief to be granted in consequence of this contravention, it is convenient to consider next the cross-claim against the cross-respondent since it is based on an alleged similar contravention of 8.52. As has been said, as at 30 September or, for that matter, subsequently, neither side could establish an exclusive association with the name "Sunday Territorian". The history of the events in question shows that the parties were proceeding with their respective plans more or less concurrently. If the litigation involved no more than a claim under the general law in passing off, a stalemate would, in my opinion, result in which neither party could obtain relief against the other. In Evans v. Eradicure Limited [1972] R.P.C. 808, rival businesses in the wood preservation field operated in different areas under the names "Eradicare" and "Eradicure". The plaintiff from small beginnings built up his business in East Kent. The defendants built up their business in the Welling and Bexley Heath areas. Each had chosen these virtually identical names independently and honestly, and for some years this gave rise to no trouble and indeed 28. neither knew the other, because they operated in different areas, However, as their businesses expanded, the plaintiff grew westwards and the defendants grew eastwards with the result that they clashed. Goff, J. observed (at p.809): ",... the plaintiff began to use the name ERADICARE before the defendants were incorporated, and, therefore, ex .hypothesi before they began to use the name ERADICURE. But that of itself is not of any great materiality, because the passing off action depends upon the plaintiff having acquired a reputation with respect to the name he seeks to - protect. The evidence shows, in some respects perhaps not very perfectly at this juncture, that the plaintiff has acquired a reputation in the name used by him in East Kent. I say perhaps not of a very perfect nature because it depends upon the evidence of the plaintiff himself and inferences to be drawn from the advertising matter and the other documents which he exhibits. There is no direct evidence from the trade connecting the name with his business. Subject to the same qualification, there is evidence that the defendants have acquired a reputation for their name ERADICURE in the area in which they have operated. If it ultimately becomes material to determine which of the two first acquired a reputation, that may be a difficult question of fact, and it is not I think one which I could resolve at all satisfactorily on the evidence pefore me. But the plaintiff's counsel very rightly says that he does not really rest the matter on chronology but on geography, and there is prima facie evidence that, although the defendants 29. had done certain work in the eastern area of Kent and have inserted advertisements in one paper which has some circulation in East Kent, their activities in that part of the country have so far been slight. It is common ground, and indeed would appear to be self-evident that the names are so similar that when they are used in the same place confusion is at least likely." An interlocutory injunction was, however, refused by Goff, J. (at p.810): "The plaintiff ... maintains the passing off action is, as indeed it 1s, founded on proof of a reputation in this country, which does not mean in the whole of the country but in this country as distinct from a foreign country. He says he has shown that reputation, and the defendants are setting up a new defence, which may or may not be open to them, that they, having also acquired a reputation, cannot be sued in this form of action. I think, however, that that is not a true view of the matter. This is apparently a problem which has not previously been decided by the courts or indeed, as far as the industry of counsel at this stage goes, adverted to in any of the cases. I do not think it is a correct approach to say the plaintiff is sueing on an age-old form of action and the defendants are maintaining a novel defence. It is a novel problem, where the plaintiff acquires a reputation in a limited area and at the same time another person is acquiring a like reputation in a nearby area, whether when they come to clash the plaintiff in those circumstances has any remedy against that defendant at 30. all. It may be that he has, although logically it would seen, if the plaintiff is right, that the defendant would then be restrained altogether, and yet that would hardly appear to be a correct conclusion and certainly is not what the plaintiff seeks by way of interlocutory relief. It may well be that the answer is in such circumstances that there is a stalemate and, unless the parties can resolve the matter by agreement, neither can obtain relief against the other and each may take the name which he has used and in respect of which he has acquired the reputation ,into the alleged territory of the other. When it comes to the trial, the court will have to consider analogies of the use by the person of his own name, analogies of conflicting rights and so forth, but this is a novel question and certainly not a situation in which in my view the plaintiff can say he has shown a strong prima facie case that he is right in law. I do not say, of course, that he will not proceed at the trial, but he has not in ny view discharged the onus upon him that he has to discharge in order to obtain interlocutory relief." In my opinion, both sides face similar difficulties in maintaining a passing off action against the other here. Since neither can establish an exclusive reputation in the name, even in the advertising and media industry, any claim for passing off must fail. But it does not follow that a contravention of s.52 has not been committed in the circumstances. I have already held that the respondents have contravened s.52. If there were no cross-clain, consideration would need to be given to the form of relief to be granted in respect of the contravention established on the applicant's claim. Given the honest, concurrent conduct 31. of both sides to the dispute, it may have been appropriate, first to decline to restrain absolutely any use of the name "Sunday Territorian" by the respondents but rather to enjoin the respondents from using the name without clearly distinguishing their publication from that of the applicant; and second, to impose a condition of the grant of any injunctive relief that the applicant itself undertake to the Court that, for its part, it would not use the name "Sunday Territorian" without clearly distinguishing its newspaper from the respondents' newspaper (see Emrik Sporting Goods Pty. Limited v. Stellar International Sporting Goods Pty. Limited (1981) 53 F.L.R. 319 at pp.327-8). Of course, the applicant may elect not to proffer any such undertaking if it should take the view that this is too high a price to pay for the injunction. If so, no injunction would lie and, from the consumer's standpoint, an unsatisfactory impasse of the kind mentioned by Goff, J. would develop. However, in the present case, a cross-claim has been made. If it be upheld, then the possible complication that the applicant may decline to proffer a suitable undertaking on its part disappears. In short, the primary object of s.52, being the protection of the consumer interest, will be vindicated if cross-injunctions are 32. granted against both sides restraining each of them from publishing under the name "Sunday Territorian" without clearly distinguishing the publication from the opposition product. Of course, the applicant, as cross-respondent, could only be enjoined if a cause of action accrues under 8.52 or under the general law of passing off. As has been said, none of the parties has established a distinctive goodwill sufficient to sue for passing off. But, in my view, by continuing to publish under the name "Sunday Territorian", without attempting to distinguish its publication from that of the respondents, the applicant has itself contravened 8.52: by marketing its product under the same name as the respondents' product, it is likely that the applicant will mislead a significant number of consumers into believing that both publications are from the same source. In my opinion, unless the applicant can establish a prior, exclusive reputation in the name, and it cannot do so, the applicant has also offended s.52. It follows, in my opinion, that limited cross-relief under s.52 should be granted along the lines indicated. 33. I turn next to the claim and cross-claim in passing off. Whether a moving party has demonstrated a distinctive reputation in the name of a product is, of course, a question of fact. Whilst unusual, it 1s not impossible for a party to persuade a court that trading over a period of less than a month is sufficient to build up a goodwill sufficient to ground an action for passing off. Stannary v. Reay [1967] R.P.C. 589 is an illustration. However, in the present case, not only is the period of trading brief but such goodwill as has been generated in the name "Sunday Territorian" has been fragmented between the parties. In short, neither side can establish that the reputation in the name belongs to it to the exclusion of its opposition. In that sense, the goodwill may, at best, be said to be shared between the parties but absence of an exclusive title to reputation in the name is fatal to a claim in passing off (see Habib Bank Limited v. Habib Bank A.G. Zurich [1982] R.P.C. 1). The claim and cross-claim on that account are rejected. Two further submissions of the respondents should be dealt with. It was suggested that, even if a passing off in the conventional sense could not be demonstrated, passing off in the extended sense, that is, the tort of "unfair competition", was available on the facts. Reference was made to Hexagon Pty. Limited v. Australian Broadcasting Commission (1975) 7 A.L.R. 233. But even if such a 34. separate, independent tort does exist, itself a doubtful matter (see Erven Warnink B.V. v Jd. Townend & Sons (Hull) Limited [1979] A.C. 731; Cadbury Schweppes Pty. Limited v. Pub Squash Co. Pty. Limited [1980] 2 N.S.W.L.R 851; Fletcher Challenge Limited v. Fletcher Challenge Pty. Limited [1981] 1 N.S.W.L R. 196; Lahore, Intellectual Property in Australia at p 3713), the necessary ingredients of fraud or "inequitable conduct" on the part of the applicant are not established here. The history of the matter shows that both parties acted honestly and concurrently and in ignorance of each other's plans until their respective products were actually launched. True it is that, notwithstanding the marketing of the rival publication, each side held its course in full knowledge of what the opposition was doing. But this cannot be treated as the inequitable filching of a rival's goodwill. MThe claim is rejected. Finally, the respondents sought to raise as a discretionary defence, a suggestion that the applicant s publication was inferior in content to their publication. An attempt was also made, in one respect successfully, to establish that the applicant's reporting was inaccurate. In my opinion such considerations, which can in no way bear upon the names of the respective publications or the goodwill generated in that connection, are irrelevant to the application of s.52 to the present case. 35. In the result, I propose to make orders on the application and the cross-claim restraining the respondents and the cross-respondent respectively from using the name "Sunday Territorian" in connection with its or their newspaper without clearly distinguishing that newspaper from its rival publication. I propose to reserve to the parties liberty to apply in the event that any question should arise as to the sufficiency of any attempt to distinguish the respective publications. An inquiry as to damages is also sought on both sides. There is no evidence of actual damage. I decline to order such an inquiry at this stage. However, 1f so advised, any party may apply for further relief on this score pursuant to the liberty to apply which I will reserve. Since the parties have each had limited success in the proceedings, I propose to make no order as to costs. I make the following orders: 1. That the respondents by themselves, their servants and agents be restrained from publishing in the Northern Territory any newspaper under the name "Sunday Territorian" without clearly distinguishing that newspaper from the newspaper of that name published by the applicant. 36. 2. That the cross-respondent by itself, its servants and agents be restrained from publishing in the Northern Territory any newspaper under the name "Sunday Territorian" without clearly distinguishing that newspaper from the newspaper of that name published by the cross-claimant. 3. Reserve liberty to any party to apply for further or other relief, if necessary, on 5 days' notice. 4. Make no order as to costs. | cernfy that this and the 35 preceding lvages are a true copy of the reasons for j4dgment herein of The Honourable 'Ar Justice Beaumont. apnrctess KBAAT Assoclata Dated 9$¥ Aiea (VEE