Australian Chinese Newspaper Pty Ltd v Chinese Press Pty Ltd (No 2) [2001] FCA 651

FEDERAL COURT OF AUSTRALIA

Australian Chinese Newspaper Pty Ltd v Chinese Press Pty Ltd (No 2) [2001] FCA 651

AUSTRALIAN CHINESE NEWSPAPER PTY LIMITED ACN 003 156 616 v CHINESE PRESS PTY LIMITED ACN 072 037 168 N 9 OF 2001 LINDGREN J 1 JUNE 2001 SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY N 9 OF 2001

BETWEEN: AUSTRALIAN CHINESE NEWSPAPER PTY LIMITED ACN 003 156 616

APPLICANT

AND: CHINESE PRESS PTY LIMITED ACN 072 037 168

RESPONDENT

JUDGE: LINDGREN J

DATE OF ORDER: 1 JUNE 2001

WHERE MADE: SYDNEY

THE COURT ORDERS THAT: 1. The motion brought by the respondent by notice of motion filed on 23 February 2001 be dismissed. 2. The parties file and serve any written submissions on costs by Friday 8 June 2001. 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 NEWSPAPER PTY LIMITED ACN 003 156 616

APPLICANT

AND: CHINESE PRESS PTY LIMITED ACN 072 037 168

RESPONDENT

JUDGE: LINDGREN J

DATE: 1 JUNE 2001

PLACE: SYDNEY

REASONS FOR JUDGMENT (No 2) 1 By a notice of motion filed on 23 February 2001, the respondent seeks summary dismissal pursuant to O 20 r 2 of the Federal Court Rules, which is as follows: "(1) Where in any proceeding it appears to the Court that in relation to the proceeding generally or in relation to any claim for relief in the proceeding: (a) no reasonable cause of action is disclosed; (b) the proceeding is frivolous or vexatious; or (c) the proceeding is an abuse of the process of the Court; the Court may order that the proceeding be stayed or dismissed generally or in relation to any claim for relief in the proceeding. (2) The Court may receive evidence on the hearing of an application for an order under subrule (1)." 2 On 17 January 2001, Whitlam J delivered reasons for judgment for refusing the applicant's application for an interlocutory injunction under s 126 of the Trade Marks Act 1995 (Cth) ([2001] FCA 10) of which each party no doubt has a copy. I gratefully adopt his Honour's account of the background facts in pars [1] to [4] of those reasons for judgment. 3 In par [11], Whitlam J said he was firmly of the opinion that there was no serious question to be tried that the respondent had infringed the applicant's registered trade mark. Encouraged by that statement, the respondent has brought the present motion for summary dismissal. 4 There are two important observations to be made at the outset. The first is that by its application which launched the substantive proceeding, the applicant seeks relief not only based on alleged infringement of its registered trade mark, but, as well, in respect of alleged contravention of ss 52 and 53 of the Trade Practices Act 1974 (Cth), infringement of copyright and passing off. In the interlocutory application Whitlam J was called upon to apply only the "substantial identity" and "deceptive similarity" tests for registered trade mark infringement posed by subs 120(1) of the Trade Marks Act 1995. He was not called upon to consider the elements of the other causes of action. A case of misleading or deceptive conduct under s 52 of the Trade Practices Act 1974, for example, invokes a broad test which might, in its application to the facts of a particular case, be broader than that which his Honour was required to apply. That is, in context, the manner of use by the respondent of the Chinese language masthead of its newspaper might be misleading or deceptive even though it was not substantially identical or deceptively similar to the Chinese language masthead of the applicant's newspaper. 5 The second general observation is that there is evidence before me which was not before Whitlam J. In particular, senior counsel for the applicant has read an affidavit sworn 28 March 2001 of Chris Sai Cheong Ma, a graphic designer, sculptor and artist, which was not before his Honour. I will refer to the expert affidavit testimony of Mr Ma in more detail below. 6 Counsel for the respondent does not submit that Whitlam J's decision on the interlocutory application gives rise to a res judicata or an issue estoppel, even in relation to the claim of infringement of the registered trade mark. It does not. An interlocutory application is one on which the order made, whether granting or refusing the relief sought, does not finally determine the parties' rights, but leaves open the possibility that the final hearing will take place on different evidence; cf Licul v Corney (1976) 50 ALJR 439 at 444 (Gibbs J); Carr v Finance Corporation of Australia Ltd (No 1) (1981) 147 CLR 246 at 248 (Gibbs CJ), 253-257 (Mason J). Counsel did, however, submit that I should give great weight to his Honour's conclusion, having regard to the fact that the essence of the applicant's case turns on the two mastheads. But this submission does not take into account the expert testimony of Mr Ma to which I next turn. 7 Mr Ma's affidavit is to the following effect. Mr Ma has been "formally trained in calligraphy". He has been living in Australia since 1996. He has made comparisons of the applicant's current Chinese language masthead, the respondent's former Chinese language masthead and the respondent's current Chinese language masthead (the respondent changed the "font" of its masthead in September 2000 (apparently on 22 September) to its present font and it is only the present font which has prompted the applicant to complain). Mr Ma testifies as follows: "Comparison of the Applicant's Logo [masthead] and the Respondent's Former Logo [masthead]