Australian Surf Life Saver Pty Ltd v S & I Publishing Pty Ltd [1998] FCA 972

FEDERAL COURT OF AUSTRALIA TRADE PRACTICES – application for injunctive and other relief – whether publication of a magazine with similar masthead to the magazine of the applicant constituted misleading and deceptive conduct pursuant to ss 52 & 53 of the Trade Practices Act – whether relevant words descriptive or distinctive - approach when words are descriptive but distinctive Trade Practices Act 1974 (Cth) ss 52, 53

Betta Foods Australia Pty Ltd v Betta Fruit Bars Pty Ltd (1998) ATPR 41-624 Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216 Independent Newspapers Ltd v Australian Consolidated Press NZ Ltd (1996) 3 NZLR 722 Equity Access Pty Ltd v Westpac Banking Corporation (1990) ATPR 40-994

AUSTRALIAN SURF LIFE SAVER PTY LTD v S & I PUBLISHING PTY LIMITED NG 684 of 1998

MOORE J SYDNEY 14 AUGUST 1998

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NG 684 of 1998

BETWEEN: AUSTRALIAN SURF LIFE SAVER PTY LTD

Applicant

AND: S & I PUBLISHING PTY LIMITED

Respondent

JUDGE: MOORE J

DATE OF ORDER: 14 AUGUST 1998

WHERE MADE: SYDNEY

THE COURT ORDERS THAT: 1. The application is adjourned until 9.30 am on 20 August 1998 to enable the parties to prepare short minutes to give effect to the reasons for judgment.

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 NG 684 of 1998

BETWEEN: AUSTRALIAN SURF LIFE SAVER PTY LTD

Applicant

AND: S & I PUBLISHING PTY LIMITED

Respondent

JUDGE: MOORE J

DATE: 14 AUGUST 1998

PLACE: SYDNEY

REASONS FOR JUDGMENT

Introduction On 8 July 1998 Australian Surf Life Saver Pty Ltd ("Life Saver") commenced proceedings against S & I Publishing Pty Ltd ("S & I") seeking injunctive and other relief founded on the tort of passing off and an alleged contravention of ss 52 and 53 of the Trade Practice Act 1974 ("the Act"). The proceedings relate to the publication of a magazine by S & I with a masthead similar to that of a magazine now owned by Life Saver. The final hearing took place on 30 July and 7 August 1998. I have been informed by counsel for S & I that the processes leading to publication of the next edition of its magazine would, unless restrained by an undertaking or an order of this Court, commence on 17 August 1998. It is plainly desirable that judgment be given by then and this was accepted by both counsel. Thus the proceedings have been heard and determined with comparative urgency and in these reasons I have tended to focus on the central issues and what I perceive to be the material evidence. The following is the background leading to the proceedings. In July 1998 Life Saver purchased an interest in a magazine called "Triathlon Sports". The magazine had been published since 1984 as a specialist sports magazine. It is not entirely clear from the evidence the nature of the interest that Life Saver purchased but it included the masthead "Triathlon Sports". The most recent edition of that magazine is Vol 13 No 7 published in April 1998. In June 1998 S & I published a magazine called "Triathlon & Multi Sport Magazine". The focus of "Triathlon Sports" magazine is the sport of triathlon which involves athletes competing in three types of athletic activity, namely running, swimming and cycling. Since 1984 it has been supplied, distributed, sold and marketed to the general public through newsagents and by subscription throughout Australia. Ten issues have been published each year. They have been published monthly except for the months of May, June, July and August in which it has been published bi-monthly. This pattern of publication has reflected the seasons for triathlon competition which conclude each year at the end of April and resume in September. Thus the magazine has been published each month during periods in which triathlon competitions have been held and bi-monthly during periods when they were not. Until February 1988 "Triathlon Sports" magazine was distributed by Gordon and Gotch Ltd. Distribution figures disclose that for the nine editions before February 1998 between approximately 7,000 and 8,200 copies were distributed and between approximately 2,500 and 4,300 were sold. From February 1998 distribution has been undertaken by NDD Distribution Pty Ltd and a similar number of copies have been distributed and sold except in relation to the most recent edition where the number of copies distributed was only 5,400. Until early 1997 the front cover of the magazine was typically in the form of annexure "A" to this judgment. The masthead was in the following form: