Australian Chinese Newspapers Pty Ltd v Chinese Press Pty Limited [2001] FCA 10

FEDERAL COURT OF AUSTRALIA

Australian Chinese Newspapers Pty Ltd v Chinese Press Pty Limited [2001] FCA 10

AUSTRALIAN CHINESE NEWSPAPERS PTY LTD v CHINESE PRESS PTY LIMITED N 9 OF 2001 WHITLAM J 17 JANUARY 2001 SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY N 9 OF 2001

BETWEEN: AUSTRALIAN CHINESE NEWSPAPERS PTY LTD

APPLICANT

AND: CHINESE PRESS PTY LIMITED

RESPONDENT

JUDGE: WHITLAM J

DATE OF ORDER: 17 JANUARY 2001

WHERE MADE: SYDNEY

THE COURT ORDERS THAT: 1. The claim for interlocutory relief made by the application is refused with 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 9 OF 2001

BETWEEN: AUSTRALIAN CHINESE NEWSPAPERS PTY LTD

APPLICANT

AND: CHINESE PRESS PTY LIMITED

RESPONDENT

JUDGE: WHITLAM J

DATE: 17 JANUARY 2001

PLACE: SYDNEY

REASONS FOR JUDGMENT 1 This is an application for an interlocutory injunction under s 126 of the Trade Marks Act 1995 ("the Act"). 2 The applicant publishes a Chinese language newspaper. The masthead of its newspaper contains a Chinese name and an English name. The Chinese name is printed above the English name in a red colour and in a larger type. It comprises four Chinese characters, which may be translated into English as "Australian New Newspaper". The name printed in English is "Australian Chinese Daily". The applicant is the registered owner under the Act of a trade mark consisting of an image of those four Chinese characters. The registration is in respect of a class of goods, which includes newspapers, and has effect from 22 October 1998. 3 The respondent also publishes a Chinese language newspaper. Its masthead also contains Chinese and English names with the Chinese name printed in a red colour and in a larger type. It comprises four characters, which may be translated into English as "Australian Daily Newspaper". The name printed in English is "The Daily Chinese Herald". On 22 September 2000 the respondent altered the masthead of its newspaper in two respects: the English name was placed above the Chinese name, and a different font was used for the characters in the Chinese name. The second of those changes is the subject of this proceeding. The applicant claims, amongst other things, that the new representation of the characters in the Chinese name of the respondent's newspaper infringes its registered trade mark. 4 The applicant's solicitors wrote to the respondent on 27 October 2000, alleging infringement of the registered trade mark and asking that it cease using its changed masthead. A substantive reply was received from the respondent's solicitor on 24 November, which effectively denied such infringement and asserted prior use by the respondent of the characters in the Chinese name of its newspaper. On 11 December the applicant's solicitors faxed the respondent's solicitor a letter, repeating their client's claims and giving the respondent a further 24 hours to cease using the changed masthead. The present proceeding was commenced on 5 January. The claim for interlocutory relief was said to be urgent because of an anticipated increase of advertising volume in the run-up to Chinese New Year on 24 January 2001. 5 Beyond the mastheads of the two newspapers, the evidence is in short compass. According to a newsletter published in 1998 by a group of Chinese media writers, there are four major Chinese language daily newspapers in Australia. Each is published daily Monday to Friday with a weekend edition on Saturday which includes a weekend magazine. The newsletter compared over a two-week period in mid-1998 the size and content of the newspapers. The weekday copies of the newspapers published by the applicant and the respondent each average over 20 pages in size with the applicant's number of pages being slightly larger. The respondent's newspaper contains more finance news than the applicant's and its coverage is slanted more towards Taiwan. No revenue figures were given for either publication. 6 The applicant commenced publication of its newspaper in 1987. The applicant's general manager, Charles Ng, gave evidence that its newspaper's daily print run increased from 4,000 in 1987 to 12,000 in 1989 to 20,000 now. About 15,000 copies are presently sold in New South Wales. Distribution is made by an authorised distributor to newsagents, grocery stores, video hire stores, supermarkets and convenience stores. Direct subscriptions are insignificant, numbering perhaps 100 copies. The respondent began daily publication of its newspaper in 1993 and adopted its current Chinese name in 1996. The respondent's managing director, Roger Huang, said that the current circulation of its newspaper was between 8,000 and 12,000. It is distributed through the same outlets, which generally display all four Chinese newspapers together. Sometimes these newspapers are displayed folded crosswise and lengthwise so that only half the masthead is displayed, but Mr Ng agreed that more often for display purposes they are folded crosswise with the whole of the relevant masthead on view. The layout of the top of the front page of the two newspapers is different. The applicant's newspaper boxes its ownership details and contents on either side of its masthead. The respondent puts display advertising in the equivalent space on either side of the masthead in its newspaper and places a pictorial guide to its inside contents below the masthead. Each newspaper's recommended retail price is the same: $1.00 for New South Wales and $1.10 in other States. 7 In cross-examination, Mr Ng acknowledged that he did not know whether there had been any decrease in the circulation of the applicant's newspaper since the respondent changed the font used to print the characters in the Chinese name of its newspaper. He was, however, concerned about the possibility of confusion, especially where any display permitted only the first two characters of each paper's Chinese name to be seen. Mr Ng explained that there are "at least 100 different and currently available types of Chinese fonts" and that different fonts may be used in the same edition of a newspaper. He annexed to his affidavit several examples of different ways of presenting the Chinese characters in the name of the respondent's newspaper by using different fonts. Mr Huang gave evidence that the typeface in the Chinese name on the respondent's masthead was not changed in order to copy that of the applicant's newspaper, but resulted from the use of a new editorial software package. Finally, for what it is worth, the applicant's solicitor noticed when he served the initiating process in this matter on the respondent's premises that the Chinese name of its newspaper on signs outside that building and at reception looked the same as it did on its newspaper before the change in September last year. 8 Counsel for the applicant submits that, in assessing the questions of substantial identity and deceptive similarity posed by s 120(1) of the Act, I should apply the tests formulated in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at first instance by Windeyer J at 414-416. I accept that submission. 9 Somewhat surprisingly, counsel for the applicant presses a submission that there is a serious question to be tried as to whether the presentation of the Chinese name on the masthead of the respondent's newspaper is "substantially identical" to his client's registered trade mark. The four characters in that mark each convey a meaning. The first, second and fourth characters used by the respondent are substantially identical, but the third character looks quite different. (It also conveys a different meaning to a Chinese reader: "daily" as opposed to "new".) Compared side by side and judging by the eye alone, I do not think that there is a serious question to be tried that the respondent has used a sign in its newspaper that is substantially identical with the applicant's registered trade mark. 10 So far as deceptive similarity is concerned, I also do not think that there is a serious question to be tried as to infringement. The new font used by the respondent has clarified the image of the characters so that, even to a person who cannot read Chinese such as me, the identity of three characters (particularly the second) is more apparent. However, the third character still looks distinctly different. The effect of the new font is to make the characters less blurry and more distinct, and I would guess more legible. Readability is, no doubt, fundamental to good typography. Those of us familiar with the Roman alphabet know how the choice of a typeface may affect readability and how important variations in lightness and boldness can be. Mr Ng's examples illustrate the same point in relation to Chinese fonts. Importantly, those examples show four distinct characters and how different in each example the third character is to that used in the Chinese name of the applicant's newspaper. Moreover, the third character in most of the examples resembles that now used by the respondent. It must be borne in mind that the respondent's Chinese name is placed on the very newspaper. Newspapers are not designed to appeal to the illiterate. A Chinese reader, seeing that name on the respondent's newspaper, would hardly call to mind the applicant's newspaper. The impression is entirely different. Three of the four characters used in the respondent's sign are not similar, but virtually identical, to those used in the registered trade mark. But that other character is critical. 11 I am conscious that impressions of a printed image may vary in the minds of different observers. However, disregarding the juxtaposition of the English titles and the different front page layouts of the two newspapers and concentrating simply on the Chinese names, I am firmly of the opinion that there is no serious question to be tried that the respondent has infringed the applicant's registered trade mark. The application will be refused with costs. I certify that the preceding eleven (11) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Whitlam.