FEDERAL COURT OF AUSTRALIA Australian Chinese Newspapers Pty Ltd v Melbourne Chinese Press Pty Ltd & Anor [2003] FCA 878 TRADE MARKS – competing Chinese language newspapers – Chinee characters in fonts comprising part of mastheads of competing newspapers – expert evidence as to Chinese calligraphy – evidence of actual deception of newspaper buyers. COPYRIGHT – same competing Chinese language newspapers – same fonts of mastheads in competing newspapers – whether artistic work involved – whether original author assigned copyright to applicant – whether sufficient degree of objective similarity – whether substantial part taken. Trade Marks Act 1995 (Cth) ss 10, 17 and 120(1) Copyright Act 1968 (Cth) ss 10, 14(1), 31(1)(a)(i), 196(2) London Printing and Publishing Alliance Ltd v Cox [1891] 3 Ch 291 Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 S W Hart & Co Pty Ltd v Edwards Hot Water Systems (1984-1985) 159 CLR 466 Dixon Investment Pty Ltd v Hall (1990) 18 IPR 490 Designer Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416 Merchandising Corp of America Inc v Harpbond [1983] FSR 32 Express Newspapers v News (UK) Ltd (1980) 18 IPR 201 London Printing and Publishing alliance Ltd v Cox (1891) 3 Ch 291 Corelli v Gray (1913) 29 TLR 570 Shell Company of Australia Ltd v Esso Standard Oil Ltd (1963) 109 CLR 407 Top Heavy Pty Ltd v Killin (1996) 34 IPR 282 P Loughlan, Intellectual Property Creative and Marketing Rights, LBC Information Services Sydney, 1998 AUSTRALIAN CHINESE NEWSPAPERS PTY LTD v MELBOURNE CHINESE PRESS PTY LTD AND CHINESE TIMES NEWSPAPERS PTY LTD N 0009 OF 2001 CONTI J 22 AUGUST 2003 SYDNEY IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY N 0009 OF 2001 BETWEEN: AUSTRALIAN CHINESE NEWSPAPERS PTY LTD APPLICANT AND: MELBOURNE CHINESE PRESS PTY LTD (formerly known as Chinese Press Pty Ltd) FIRST RESPONDENT CHINESE TIMES NEWSPAPERS PTY LTD SECOND RESPONDENT JUDGE: CONTI J DATE OF ORDER: 22 AUGUST 2003 WHERE MADE: SYDNEY THE COURT ORDERS THAT: 1. The respondents and each of them be restrained from manufacturing, publishing, selling, or offering to sell, supplying or offering to supply, and distributing or offering to distribute any newspapers upon which appears any trade mark substantially identical with or deceptively similar to Registered Trade Mark No. 776305. 2. The respondents and each of them be restrained from reproducing or authorising the reproduction of a substantial part of the artistic work the subject of Registered Trade Mark No. 776305. 3. The respondents and each of them be restrained from authorising, directing or procuring any other company or person to engage in any of the conduct restrained by Order 1 or Order 2 above. 4. The proceedings be stood over to a date to be fixed for directions as to determination of the damages relevantly sustained by the applicant and the profits relevantly derived by the respondents. 5. The respondents pay the costs of the proceedings other than so much thereof referrable to the interlocutory proceedings disposed of on 17 January 2001 and 1 June 2001. 6. Orders 1 to 4 above be stayed for thirty days from date hereof with liberty to either party to apply in the meantime. 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 0009 OF 2001 BETWEEN: AUSTRALIAN CHINESE NEWSPAPERS PTY LTD APPLICANT AND: MELBOURNE CHINESE PRESS PTY LTD (formerly known as Chinese Press Pty Ltd FIRST RESPONDENT CHINESE TIMES NEWSPAPERS PTY LTD SECOND RESPONDENT JUDGE: CONTI J DATE: 22 AUGUST 2003 PLACE: SYDNEY REASONS FOR JUDGMENT The background to the present proceedings and the evolution of the titles to their respective daily newspapers published in Australia 1 The applicant and the respondents have at all material times respectively controlled two of the four independent publishers and distributors of daily Chinese language newspapers for the time being in operation in Australia. Each of those four newspapers are produced and distributed on every day of the week except Sunday. Their respective Saturday printed editions bear weekend dates (ie Saturday and Sunday). The applicant's newspaper has been published and distributed since 1987 and the respondents' newspaper has been published and distributed since 1986. The respondents' newspaper was initially published and distributed by the first respondent alone, but as from 12 May 2001, it was said to have been published by the second respondent instead, though no documentation constituting or evidencing any transfer of assets was tendered in evidence. Relief has been sought by the applicant against both respondents without distinction, and these reasons for judgment will reflect that circumstance. The corporators of both respondents are the same, or virtually so. The principal witness for the respondents and their managing director (Mr Roger Huang) purportedly confined the subject matter of asset transfers to '[o]nly sell the business title'. The convenient course is hereafter to refer to the respondents together and without distinction, particularly since their newspaper has been at all times subject to the same or virtually the same directorship and management control. The same relief is sought by the applicant against both respondents. At all material times, both the applicant's principal newspaper and the respondents' principal newspaper have been distributed in the States of New South Wales, Victoria, Queensland, Western Australia and South Australia, whilst some additions might also be sent to Darwin. Other publications of the respondents have been identified in the course of the proceedings, but all references generally to the 'respondents' newspaper' are to their daily newspaper. What I will record below concerning the evolution of the respective titles to these rival newspapers requires the reader to refer simultaneously to what is set out in Exhibit A12 to these reasons. 2 The litigation concerns the similarity or otherwise of the logo adopted and used by the respondents as part of the masthead of their newspaper, as from 23 September 2000, when compared with that earlier adopted and used by the applicant, as from 22 October 1996. The applicant's logo is registered as Trade Mark No 776305 in the Register of Trade Marks for a period of ten years commencing from 22 October 1998. A copy of the certificate of registration is attached to these reasons for judgment. The principal cause of action of the applicant is for trade mark infringement. The other is for copyright infringement, framed upon the basis that the applicant's logo is an artistic work. The respondents admit that the applicant is the owner of that trade mark, but deny any infringement thereof. The respondents do not admit that the applicant's logo or any part thereof is an original artistic work in which copyright subsists, or that in any event, the applicant is the owner of copyright in any such artistic work. Originally, a cause of action for passing-off was also pleaded by the applicant, but that cause of action was discarded from the Further Amended Statement of Claim filed on 10 December 2002. I observe that par 37 of that pleading also refers obliquely to 'engage[ment] in conduct in contravention of the Trade Practices Act 1974', but that inclusion appears to be inadvertent, and no submission is advanced in relation to any such cause of action. 3 The applicant contends that the respondents' logo was so adopted on 23 September 2000 for the purpose of creating a marketing environment in which the two competing newspaper publications would be susceptible to mistake or confusion at the point of sale on the part of consumers, thereby enabling the respondents' circulation to be increased to the detriment of the applicant. Prior to that change of the respondents' logo on 23 September 2000, there had earlier occurred on 1 November 1997 a change of their then preceding logo which had moved the same closer in design and appearance to that of the applicant adopted as aforesaid on 22 October 1996. The change made to the respondents' logo on the later date of 23 September 2000 was the more critical, and constitutes the essential focus of the litigation. The applicant has contended that the respondents' logo adopted on 1 November 1997 for its masthead accorded with the Hsing-Shu style of Chinese calligraphy, whereas the logo of the respondents' masthead adopted subsequently from 23 September 2000 to date appears in the Li Shu style of Chinese calligraphy. The applicant's logo adopted from 22 October 1996 was a version of Chinese calligraphy said to have originated in China at the time of the Han Dynasty, and was acquired by the applicant from Professor Huang, a famous Chinese calligrapher (unrelated incidentally to the respondents' decision-maker Mr Roger Huang). Calligraphy is described in the evidence as a very ancient skill developed in China by artists (rather than writers) drawing pictures in their individual styles for different purposes or reasons. 4 Attached to these reasons for judgment is a copy of Exhibit A12, containing two columns, that on the left hand side depicting the evolution of the Chinese title to the logo or font of the masthead of the applicant's newspaper, and that on the right hand side depicting the evolution of the Chinese title to the logo or font of the masthead of the respondents' newspaper. What is coloured red on each side depicts the characters comprising the logos or fonts of the mastheads for the time being of the respective newspapers. The smaller heading on the left hand side 'Australian Chinese Daily' is the English language title to the applicant's newspaper, which does not however reflect any translation into English of any of the applicant's successive Chinese logos or fonts of its masthead, but refers to an additional but less prominently framed title inserted for the benefit of Australian based entities, such as advertisers, who do business with the applicant's newspapers. The smaller heading on the right hand side of 'Melbourne Chinese Press' is an error, and for consistency should have read 'Daily Chinese Herald', the English language title to the respondents' newspaper, which serves the same limited purpose as the abovementioned English language title to the applicant's newspaper 'Australian Chinese Daily'. 5 The references to the Chinese words O Chau, Sun and Pao in the left hand column of the attached copy of Exhibit A12 and to the same Chinese words, except for Yat instead of Pao, in the right hand column thereof, represent translations into the Chinese language of the adjacent characters of the logos or fonts of the mastheads for the time being in force of the respective newspapers into the Chinese language. Thus 'O Chau' in Chinese translates to 'Australian' in English, 'Sun' in Chinese translates to 'New' in English, 'Pao' in Chinese translates to 'Newspaper' or 'New' in English, and 'Yat' in Chinese translates to 'Daily' in English. My references above to Chinese translations are to the Cantonese rather than to the Mandarin dialect. The dates refer to the times of change of each party's logo or font. No reference appears on Exhibit A12 to the abovementioned English titles 'Australian Chinese Daily' and 'Daily Chinese Herald', which as I have indicated in the preceding paragraph of these reasons, appear under the mastheads of the newspapers for the limited purpose stated earlier, and which are not purported translations of any of the Chinese titles. The history and nature of the proceedings 6 The proceedings were commenced on 5 January 2001 by application and statement of claim. The applicant sought interlocutory relief upon the basis of causes of action for breach of trade mark, breach of copyright and passing off, the first respondent then being the only respondent to the proceedings. That application was refused by Whitlam J with costs on 17 January 2001. The affidavit material placed before his Honour on that early occasion was relatively scant in comparison to that put before me at the final hearing, as exemplified by the circumstance that the evidence, and the closing submissions of counsel, occupied only one day before Whitlam J. The final hearing before me of the evidence alone occupied eight days. The essence of his Honour's reasons for judgment are set out below, because of the respondents' emphasis thereon in the course of the final hearing: '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. 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. 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.' 7 Despite that set-back, the applicant pursued each of its original causes of action, and as a consequence, the first respondent sought summary dismissal thereof, which was however refused by Lindgren J on 1 June 2001, upon the basis that '[w]hile the applicant's case still seems to be a difficult one, the evidentiary position on a final hearing would be different from the limited one which was before Whitlam J'. His Honour pointed in particular to subsequent affidavit evidence provided on 28 March 2001 by a graphic designer, sculptor and artist, being Mr Chris Ma. A partial order for costs was made in favour of the applicant as a consequence of that unsuccessful dismissal application. 8 Since that time, the statement of claim has undergone amendment, first on 1 May 2002, when the second respondent was joined in the proceedings, and secondly on 10 December 2002, when the passing off cause of action was discarded. The hearing of the evidence commenced before me on 9 December 2002, and continued on 10, 11, 12, 13, 16, 17 and 18 December 2002. Lengthy written submissions in chief were subsequently provided by the applicant on 4 March 2003, and were the subject of even more lengthy written submissions provided by the respondents on 4 April 2003. Oral submissions followed on 7 and 8 April 2003. 9 It is perhaps appropriate to record at the outset the somewhat anomalous circumstance that the respondents have never entirely abandoned the use of the immediately preceding version of their present logo first introduced on 1 November 1997, whether as to all four characters thereof, or as to the first character thereof. The applicant relied on that unexplained practice as an implicit indication that the last change of logo on 23 September 2000 was made by the respondents to attract accidental or mistaken purchases of their daily newspaper by unwary patrons of the applicant's newspaper, yet nevertheless to signal to the respondents' existing readership that no change in proprietorship was to be inferred by that change of logo appearing at the top of the front page of their principal publication. That ongoing use of their preceding logo, in whole or in part, was exemplified, inter alia, as follows: (i) in the respondents' 20/21 January 2001 edition (mistakenly on that occasion showing the year 2000), at the top of the second and following pages of that edition, though not in the masthead at the top of the front page; (ii) on page 22 of the classified section of the respondents' newspaper published on 6 December 2002; (iii) on the large sign outside the respondents' premises in Sydney, at least as it appeared up to December 2002 when the photograph thereof produced in evidence was obtained by the applicant; (iv) on the respondents' letterhead, as it was used in October 2001 in a communication with newsagents; and (v) at the top of the cover of the respondents' separate publication, having the English title 'Oz Weekly', which is distributed as an inset to the respondents' newspaper each Friday. It was implicitly evident that the above instances were not exhaustive or isolated. The respondents did not proffer a plausible explanation for the occasional continuing use of one or more of the characters of their former logo. Other circumstances concerning the parties' newspapers and their respective operations and market shares 10 The evidence establishes that the applicant's newspaper has been at least at all material times the market leader of the Chinese language newspapers published in Australia. Mr Charles Ng, the owner and general manager of the applicant for about eleven years, who had the benefit of eleven years experience in Chinese language newspaper operations in Australia at the time he gave evidence, and who spoke and understood English as well as Chinese (being fluent in both Mandarin and Cantonese), and who was able to translate between Chinese and English in both directions, estimated that the applicant's newspaper attracted an average daily readership in excess of 38,000 in respect of the year preceding his second affidavit sworn on 17 September 2002. He had arranged for two market surveys to be conducted in late 1998 and early 1999 respectively. The first was undertaken in relation to 250 newsagents located in the greater Sydney region, with the assistance of the distributor of the applicant's newspaper in Australia. Responses were received from almost 100 of those circulated entities, which disclosed statistically that the applicant's newspaper then enjoyed 44.25% of the aggregate of all sales of Chinese language newspapers made in the Sydney region. The other survey was made of readers (in contrast to newsagents) of the applicant's newspaper, whereof 112 responded, indicating thereby the following household readership profile: 'A total of 112 households responded, representing a total numbers (sic) of 443 family members or 395 members per family : 72%, or nearly 3 members per household, normally and regularly read the Australian Chinese Daily.' Mr Ng further spoke of the applicant's newspaper having experienced, since the time of the surveys, 'not a very obvious increase, a small plus or minus'. 11 Further testimony both in chief and in cross-examination given viva voce by Mr Ng, and without the assistance of an interpreter, included the following: (i) the written Chinese language is expressed in one of two forms, 'traditional' and 'simplified'; the former traces back many hundreds, perhaps thousands, of years; the latter was developed in mainland China during the 20th century; (ii) the newspapers of both the applicant and the respondents are written in traditional language, and are both broadsheets; most of the applicant's readers would read traditional language; (iii) the Chinese titles of both newspapers is for the benefit of identification by Chinese readers, and the English titles are mainly for the benefit of identification by advertisers in Australia; the latter were said to belong to the 'mainstream community' (Telstra was one example cited); an English title is also necessary for 'company registration'; (iv) from a distance of about 8 to 10 feet, he could readily discern the respective newspapers of the parties, albeit with the eye of an owner; moreover when a customer walks into a newsagency, he or she would get 'a lot closer' than 10 feet; those concessions were strongly featured in the respondents' submissions, but the photograph Exhibit R1 demonstrates how much depends on the layout of the counter upon which the two newspapers (and others) are placed; (v) on most occasions when the respective newspapers of the parties are displayed for sale, they are physically folded and therefore physically displayed in half; moreover except for Saturday editions because of the increased number of pages, the same may be physically folded in quarters; (vi) the third character of the logo of the applicant's newspaper (denoted as 'Sun') 'sets it apart' from the respondents' newspaper in that respect, though 'the only distinctive character between the two marks or logos is the third character in both marks'. (vii) '[o]ne of the striking features with respect to the [applicant's] newspaper are the English words 'Australian Chinese Daily'; (viii) the proposition that '[t]he only characters which helped the customer to select the paper… are the last two characters…', and if the applicant's newspaper or respondents' newspaper was to be folded in quarters, the newsagent would ensure that the last two characters of its logo would appear on the quarter displayed, was an unrealistic scenario (the latter is my summation of Mr Ng's response, which I consider to be correct in any event as a matter of observation of the various newspapers of the applicant and respondents tendered in evidence); (ix) there had been over the past two years a growth in readership [of Chinese newspapers generally] on the part of persons originating from mainland China; (x) persons who mistakenly purchased the respondents' newspaper brought them back for exchange with the applicant's newspaper (in the course of his cross-examination in the interlocutory proceedings before Whitlam J, Mr Ng agreed however that '[i]t is unlikely that once the mistake is detected that a reader of [his] newspaper would stop reading the Chinese Daily and start reading the Chinese Herald….'); (xi) the return of unsold newspapers from newsagents does not take place for about 'a month or so'; (xii) the applicant's distributors only pay the applicant for newspapers actually sold; (xiii) the market into which the applicant promoted its newspaper comprised persons originating from mainland China, Hong Kong and Macau; the market into which the respondents promoted their newspaper did not comprise persons made up substantially or predominantly of people who originate from Taiwan, nor did most of the respondents' readers come from Taiwan (Mr Ng agreed however in the course of cross-examination before Whitlam J that 'there's a slant or bias in the [applicant's newspaper] towards forecasting or publishing information regarding Taiwan…'); (xiv) nevertheless there were no distinct markets in relation to Chinese newspapers for people of Taiwanese origin, as opposed to people from Mainland China, Hong Kong and Macau, and the respective newspapers of the parties are not promoted 'into those two distinct markets'; (xv) the mistaken purchases which occurred of the respondents' newspapers arose because of a similarity of the mastheads of the competing newspapers of the parties; (xvi) the normal practice of buying a newspaper is for the buyer to pick up what is displayed on a stand or table, and to pay for the same at the counter; '[t]hey don't actually go up to the shop assistant and ask for a newspaper'; the respective daily newspapers of the parties are both sold for the same price; and (xvii) the number of readers of the respective newspapers of the parties is proportional to the population mix. I found Mr Ng to be frank and credible throughout the giving of his evidence at the final hearing, and I encountered no reason to doubt the credibility generally of both his affidavit and oral evidence. 12 Mrs Huang, who is the general manager of the respondents' newspaper, and the wife of the abovementioned Mr Roger Huang, the managing director of and principal witness for the respondents, testified nevertheless that '… as far as I know [the largest selling Chinese daily newspaper in Australia] should be Sing Tao… based on my experience' (Sing Tao has been for some time published in Australia, being part of the Sing Tao Newspaper Group based in Hong Kong). Incidentally, the fourth Chinese newspaper published in Australia was previously 'The Independence Daily', which closed down in August 2002, and it was succeeded by the '2ac Chinese Daily'. Mrs Huang had not conducted, nor could she identify, any survey to support her opinion. I would readily adopt the applicant's evidence on the subject of market share, at least for the reason that the same has the benefit of the applicant's market surveys. In any event, Mr Roger Huang subsequently testified that the applicant's circulation was '… always… much bigger than ours', albeit for the different evidentiary objective described below. He estimated in another context that the current circulation of the respondents' newspaper was 'between 8,000 to 12,000', which as will later be mentioned, may well have been an overstatement. Copies of the mastheads appearing on the front pages of each of those four currently produced newspapers, and of the now discontinued newspaper, are attached to these reasons. 13 The applicant's newspaper and the respondents' newspaper are of similar size and physical format, both being broadsheets with about the same number of pages in corresponding (ie daily competing) editions. As already indicated, both sell for the same price, apparently through retail outlets of a similar kind. Consistent with his concession on circulation comparisons, Mr Huang asserted further, albeit in an endeavour to establish the respondents' case as to the unlikelihood of buyer inadvertence in purchasing the respondents' newspaper in retail outlets, in mistake for that of the applicant, that '[a]ccording to my understanding the Chinese Daily (ie the applicant's newspaper) has between 500 to 600 outlets. The Chinese Herald (ie the respondents' newspaper) has 300 outlets. So [there's a] very, very, real opportunity that any shop has only [one] Chinese Daily without a Chinese Herald'. The applicant's contention in the proceedings was that at newspaper outlets where the newspapers of both of the litigants were sold, the reality was that one competing newspaper would normally sell out completely before the other, and perhaps more pertinently, people would often buy their newspaper in the course of haste, for example, to be on time for public transport. Therefore, so the applicant's case was put to the Court, the potential for confusion, by reason of the similar appearance of the respective logos of the two competing newspapers, was inherent and inevitable. Moreover as Mr Huang himself agreed, '…people don't always buy their papers in the same shop every day'. 14 As I have already foreshadowed, the respondents' case was that they operated in separate markets to those in which the applicant operated, in that the applicant's readership resided in persons originating from or otherwise connected to mainland China, Hong Kong and Macau, whereas the respondents' readership resided in persons originating from or otherwise connected to Taiwan. To cite Mr Roger Huang's affidavit evidence, '[t]he two papers are specifically directed to two totally different markets with only some overlapping involving the Australian news'. That contention was contradicted by the applicant's principal witness Mr Ng, who maintained the thesis throughout his cross-examination that each of the four Chinese daily newspapers targeted the same readership market in the form of the Chinese language reading population in Australia. Mr Ng readily accepted, in the course of cross-examination, that 86% of the applicant's market share was in fact 'Mainland Chinese and Hong Kong Macau people', but he did so on the footing that such proportion 'related to the population mix' of Chinese people in Australia, and further that '[t]here is a growing number of Chinese of China origin compared to the other origin. That's a natural growth in terms of readership in that area…'. Mr Huang conceded that both newspapers published international news, Australian news, entertainment news, sports news and classified advertising. The theme of Mr Huang's evidence as to a virtually exclusive Taiwanese readership of the respondents' newspaper on the one hand, and as to a virtually exclusive Hong Kong, Macau and mainland China readership of the applicant's newspaper on the other, was in my opinion overstated, and should be discounted in favour of the more realistic and frankly given evidence of Mr Ng. That theme advanced by Mr Huang did not survive his detailed cross-examination, undertaken virtually page by page, upon the country news and other focuses of the respondents' newspaper published on the very day he was being cross-examined. For completeness I should record that Mr Ng agreed that the applicant's newspaper published stock market data from Hong Kong, whereas the respondents' newspaper published stock market data from Taiwan. 15 In any event of course, the applicant's case relates primarily to the probability of some degree of inadvertent buying of the respondents' newspaper by members of the Australian Chinese community. Moreover Mr Ng claimed, as I have already foreshadowed, that advertisers in the applicant's newspaper had no business connection with mainland China, for the reason that the readers would normally buy their goods and services in Australia. The inference I would draw is that the same thesis would be likely to be true of any advertiser's connection with Taiwan, or for that matter with Hong Kong or Macau. Mr Ng disputed the notion propounded by the respondents that the 'vast majority' of readers of the respondents' newspaper emanated from Taiwan, and Mr Huang's lengthy cross-examination upon the content of a current edition of the respondents' newspaper from cover to cover obtained concessions implicitly consistent with Mr Ng's contention. In summary, I find that Mr Huang overstated the extent of geographical focuses of the two competing newspapers, and that Mr Ng's summation was the more credible. Evidence of actual incidents of deception of members of the public tendered by the applicant 16 Two newsagents gave evidence of experiences of apparent deception of their customers as to purchases of the respondents' newspapers. The evidence of both was objected to on the sole basis of relevance. I overruled those objections. The first was Mr Yeo, who had operated a newsagency in Ashfield for 10 years, and who spoke, read and understood the Chinese language dialects of Cantonese and Mandarin, as well as English. He said that while pronunciations in the Cantonese and Mandarin dialects are different, Cantonese printed papers can be read by persons of Mandarin dialect, and I would infer from the implicit theme of his evidence, vice versa. Mr Yeo's newsagency sold each day about 30 copies of the Australian Chinese Daily and about 15 copies of the Daily Chinese Herald. Mr Yeo provided the following affidavit evidence in particular (to which the respondents unsuccessfully objected on the sole ground of relevance): '9. I recall the Daily Chinese Herald changed its logo at the top of its newspaper at around the end of September 2000. 10. I recall that for a period of about three or four weeks after the change of the logo, some customers, the exact number I cannot recall but must be not less 5 a day, came up to me holding a newspaper at the counter and spoke to me in Chinese, which when translated into English, was to the effect: Customer: "There is something strange about this Australia Chinese Daily?" Me: "Are you buying Daily Chinese Herald?" Customer: "No, I meant to buy Australian Chinese Daily". 11. I then observed each of those customers put back the newspaper and select the Australian Chinese Daily. 12. Also, I have many conversations with customers since September 2000 and I still have these conversations, where a customer spoke to me in Chinese, which when translated into English, was to the effect of: Customer: "Last time I accidentally bought the Daily Chinese Herald." Me: "Really? Did you mean to buy a different one?" Customer "Yes. I wanted to buy the Australian Chinese Daily".' Mr Yeo did not change any of his affidavit evidence, in the course of his cross-examination. I find no reason to reject the accuracy of detail of his affidavit and oral testimony. 17 The second newsagent witness for the applicant was Mr Zhang, who operated a newsagency at North Hurstville, and who was not dissimilarly qualified linguistically as Mr Yeo. He sold every day about 320 copies of the Australian Chinese Daily and about 50 copies of the Daily Chinese Herald. He provided the following affidavit evidence, to which unsuccessful objection was made on the same basis as to absence of relevance as that proffered in relation to Mr Yeo: '10. I recall at around end of September 2000, the Daily Chinese Herald changed the logo at the top of its newspaper. 11. At the time, I recall that the number of copies of the Daily Chinese Herald increased. 12. I recall that for a period of at least five to six weeks after the change of the logo, numerous customers – at least eight a day during that time – came up to me at the counter and spoke to me in Chinese, which when translated into English, was to the effect: Customer: "What have they done to the O Chau Sun Pao?" Me: "You have the O Chau Yat Pao in your hands." Customer: "Really?" 13. I then observed each of those customers put back the newspaper and select the Australian Chinese Daily. 14. Also, I have many conversations with customers since September 2000 and I still have these conversations, where a customer spoke to me in Chinese, which when translated into English, was to the effect: Customer: "Last time I was here, I accidentally bought the O Chau Yat Pao." Me: "Really? Did you mean to buy a different one." Customer: "Yes. I wanted to buy the O Chau Sun Pao." Me: "I remember that you said that to me before." Customer: "Yes. It is not the first time. I thought I would remember to be more careful. I'm always in a hurry." 15. From standing at the counter, I have observed that only very few of my customers buy more than one Chinese language newspaper from my newsagency at the one time. As a rough estimate, only about one in 40 people buy more than one Chinese language newspaper during the week, especially weekends.' Mr Zhang was cross-examined at length, but adhered to his affidavit testimony, asserting for instance in relation to mistaken newspaper purchases, 'some returned to me instantly, but some return it the next day and told me I picked up the wrong paper', and that '[i]t happened most immediately after the Chinese Herald changed the masthead'. I have also encountered no reason to reject the accuracy of the thrust or detail of any of his testimony. Internal records relating inter alia to quantities of newspapers supplied to and returns inter alia made by Mr Zhang's Forest Road newsagency in August, September, October and December 2000 comprise Exhibit R21. 18 Mr Ng conceded, in his evidence given earlier to Whitlam J, that upon discovery of a mistaken purchase of the respondents' newspaper in lieu of the applicant's newspaper, the purchaser would be unlikely to repeat that mistake. In the same context, Mr Ng rejected the suggestion that the Chinese community in Australia generally would necessarily recognise Professor Huang's style of writing adopted by the applicant's logo, despite his fame among Chinese people as a calligrapher; realistically the rejection of that suggestion of Mr Ng must be correct, particularly in the circumstances of hasty purchases of newspapers hurriedly or inattentively, which was largely the focus of the applicant's apprehension. Expert evidence tendered by Mr Chris Ma 19 The applicant adduced expert evidence from Chris Sai Cheong Ma ('Chris Ma') on the subject of calligraphy and the role thereof in relation to the relevant Chinese dialects of Mandarin and Cantonese. He is a graphic sculptor and artist, who has been living in Australia since 1996. The initial evidence proffered in his first affidavit (sworn 28 March 2001) may be summarised as follows: (i) a Chinese reader understands Chinese characters and their ideas differently to the way in which an Australian person reading English would understand or appreciate words; (ii) in the Chinese language, each character may have a number of meanings or connotations, and the intended meaning in a particular instance may only be apparent from the context in which the word appears; therefore for a Chinese reader to understand a sentence or phrase in Chinese, it is necessary for that person to consider all the characters; (iii) as in English, there is a variety of ways to express in Chinese the same idea; just as in Chinese, each character may have a variety of meanings, so also in Chinese do a number of characters have similar meanings; moreover just as in English, rhyming or similar sounding words, even though having a different meaning, may create or remind a person of another word, so too that occurs in Chinese; (iv) the sounds made, when the applicant's present logo (adopted on 22 October 1996) and the respondents' former logo (adopted from 1 November 1997 to 23 September 2000) are read aloud, are 'quite similar'; moreover the third character of the respondents' former logo is an insignificant word and sound which does not take away from the similarity between the other characters, and therefore of the overall effect of the characters generally of the respondents' logo; (v) given the spoken similarity between the applicant's present logo and the respondents' former logo introduced on 1 November 1997, the main point of difference was their use of different fonts; the applicant's logo had been written, apparently by hand (as distinct from a brush), in a font in the Li Shu style, which was invented in the Chun Dynasty ruling from 221 to 206BC, and became a popular font in the Han Dynasty ruling from 206BC to 220AD; that font signified a particular style, and conveyed to Chris Ma a particular 'feeling' or mental impression; (vi) There may be numerous 'type styles' which are said to be within the Li Shu style, which is characterised by an appearance of handwritten fonts having different types of strokes from other 'font families'; (vii) by way of comparison, the respondents' logo introduced on 1 November 1997 was framed in the Xing Shu style, which originated from the Tang Dynasty period of AD 618-907; and (viii) the differences between the applicant's present logo and the respondents' former logo were striking; at a casual glance, and even on a more careful inspection, those two logos looked differently because of their difference in font. Chris Ma's reference to the Xing Shu style would appear to be the same or essentially the same, as the Hsing-Shu style described by Professor Huang in these reasons. 20 Chris Ma produced to the Court, in the course of his affidavit evidence, the introduction chapter of the third edition of a book published by Harvard University Press entitled 'Chinese Calligraphy – An Introduction To Its Aesthetic and Technique' by Chiang Yee (Exhibit A20). Four excerpts from that chapter eloquently suffice to demonstrate the artistic nature of Chinese characters constituting the art of Chinese calligraphy, as follows: 'Page 4: … Chinese characters, on the other hand, display a handsome variety in the shapes of the strokes, and each stroke may contain an individual variation of form, passing from the slender to the bold. English words, again, are limited mechanically as to length by the number of letters, and all must be written regularly from left to right; whereas every Chinese character is constructed in an imaginary square, which it can fill in a variety of beautiful ways… Page 11: It is commonly believed in China that calligraphy expresses the personality of the writer. An individual's characters, disposition, and propensities, as well as his good or bad fortune, are said to be accurately ascertainable from his handwriting. I am aware that the art of interpreting the handwriting of Western countries has become almost a science, but in my opinion the variety of construction and the arrangement and form of the strokes make Chinese even more susceptible to this form of analysis… Page 14: Chinese characters are monosyllabic and pictographic. They are not made up of an alphabet, but stand alone, each ideogram throwing on the mind an isolated picture. This is a different system from that of any Western language. European words are sound symbols intended for pronunciation and containing no visual idea. Some of our characters too, I must admit, are only sound symbols, having no "written" meaning, but these derive chiefly from our comparatively recent attempts to translate by their sounds and words of foreign languages into our own. Chinese characters comprise three elements, thoughts, sound, and form, and thus are able to fulfil both the uses of daily life and the exacting requirements of an artistic medium... Page 17: In China calligraphy is the most popular of the arts. It is a national taste, a common aesthetic instinct nourished in every Chinese from childhood up. There are many more scholars who are "crazy" over it than over painting. Good paintings, songs and poems are not common, but good calligraphy is to be found everywhere in China and at every period of history. The majority of Chinese people – like the majority of any other nation – understand almost nothing of the art and literature, yet all of them can gaze at a piece of calligraphy with pleasure simply for its familiar shapes and composition. Families which are too poor to afford ancient paintings will possess rubbings of characters taken from engravings on bronze and stone objects…' I have borne the foregoing considerations in mind in my endeavours to comprehend the expert evidence by the parties. 21 In comparing the respondents' former logo introduced on 1 November 1997 with the respondents' current logo introduced on 23 September 2000, Chris Ma said in his first affidavit that there was a difference in their respective fonts or characters, which created a 'quite different appearance' in the latter from the former; moreover a Chinese reader, familiar with basic Chinese characters and calligraphy, would perceive a difference between those two fonts, being a difference of significance. 22 In comparing the respondents' current logo introduced on 23 September 2000 with the applicant's current logo introduced earlier of course on 22 October 1996, Chris Ma's first affidavit evidence was that 'the similarity… is very close', being a similarity for the following reasons: • A considerable number of Chinese speakers in Australia have received a formal education in the Chinese language; thus when he was in school in Hong Kong, he was required to study different fonts and calligraphic styles, and to practise Chinese calligraphy by using a brush; moreover when speaking as an adult with people of Chinese descent, and with migrants to Australia from Chinese speaking countries, it was apparent to him that they had received that kind of education. • Chinese residents in Australia 'in general have a strong concept as to the different fonts and typefaces of Chinese characters'. As a consequence, he was of the opinion that there are many Chinese speakers in Australia 'who are sensitised to the significance of a particular font'. 23 Chris Ma further testified by his first affidavit that Chinese characters are pictorial representations of concepts, and to a Chinese reader, the pictorial representation of a particular character is more significant than to an English speaker, and moreover the feel or appearance of a Chinese character is an important factor in conveying a message about a particular product, in circumstances of the use of a collection of characters as a logo for that product. 24 Chris Ma thereafter concluded his first affidavit as follows: (i) the applicant's newspaper and the respondents' newspaper both used the same red coloured font, outlook and pattern for their respective current logos, which are also of similar size; (ii) a Chinese reader would select a newspaper based on the overall shape of the logo, rather than by reason of a careful reading of the logo; for that reason, having regard to the cover and similarity between the shape, particularly that of the 'first few characters of the logo', the applicant's current logo and the respondents' current logo are 'for all purposes, indistinguishable'. As will later be explained below, Chris Ma subsequently modified, albeit not significantly, that thesis of 'indistinguishable' in his third affidavit. 25 In his second affidavit sworn on 8 September 2002, Chris Ma spoke of the origins and historical development of the Li Shu font, and in particular how '[o]ver time, the shape of the horizontal stroke changed from a straight line into a wavily shape, which became the most recognisable feature of Li Shu'. He drew three pages of Li Shu fonts, having different styles, representing the Chinese name of O Chau Yat Pao,for the respondents' newspaper, a task which took him several hours using a Chinese brush and ink. Thereafter he scanned those examples so drawn by him into a computer, and aligned them onto three sheets of paper which were tendered in evidence in the proceedings. Those examples were said by him to demonstrate the variety of Li Shu styles inscribed in stone in the Han period, despite the limitations in modern times for calligraphers working in stone. He also provided two examples from famous calligraphers of the Ching dynasty, and contemporary examples of Li Shu calligraphy. 26 In his third affidavit sworn on 5 December 2001, Chris Ma conceded that '[o]n reflection, I consider that statement (ie that made in his first affidavit as to the respective current logos of the parties being 'for all purposes indistinguishable') is incorrect and overstates matters. However, it is my belief that the two logos are extremely similar and are easy to confuse'. Chris Ma added incidentally to his previous list of qualifications details of his formal training in, and subsequent teaching of the techniques of calligraphy, and his organisation of exhibitions and seminars concerning historical and contemporaneous calligraphy. Other material in his third affidavit related to his responses to the respondents' affidavit evidence, which need not be repeated, in the light of the extent to which I have already recorded his evidence, both above and below. 27 Under cross-examination, Chris Ma added a number of explanations as to the theme of his affidavit evidence; I have extracted the same below, because of their potential significance: (i) as to the applicant's logo, '[u]sually if you read the four character[s] you will find that they are O Chau Sun Pao but usually we just look at the impact of the image'; (ii) '… [the Chinese] look at the overall image because they have [borne] in mind that the four character[s] come together, become one image'; (iii) 'I think the Chinese people when they look at the whole masthead they will comprehend but they won't translate back into English'; (iv) '… I agree with that point (ie that the Chinese word Sun translates into the English word "new" and the Chinese word Yat translates into the English word "daily"), but I just want to say that if you isolate the Yat and Sun they are different but when we buy the newspaper, they all come together, so it would be very easy to make us confused'; (v) 'By way of contrast, [t]he third and fourth character of the 2ac Chinese Daily and the third and fourth of the Daily Chinese Herald (ie the respondents' newspaper) are the same but I won't make any mistake when I look at those two because overall they are different'; (vi) '… they (ie Chinese mastheads) become a pattern and become a habit, when something like that as a masthead already exist[s] in the newsagents it becomes a visual experience'; (vii) 'I have never heard some people saying Yat Pao or Sun Pao. That's my experience'; (viii) 'Chinese calligraphy is a kind of handwriting of the character to the style…'; (ix) 'The third character in both [of the parties respective logos] is the only character which distinguishes two logos…The third character of the Australian Chinese Daily and the Daily Chinese Herald is different and the overall effect… will still impact, they won't make any difference when I look at them'; (I interpolate to observe that the reference above to 'they' is of course to the third characters per se of the respective present logos of the applicant and respondents.) (x) 'The pronunciation (ie of Yat and Sun) is different… the meaning of the title is different but the outlook [is] nearly the same. So it would be easy to make [a] mistake'; (xi) 'At a glance they can't tell [which paper is O Chau Sun Pao and which paper is O Chau Yat Pao]… because I have make (sic) a mistake in the newsagents at a glance'; (xii) '… when I go to the newsagent where I buy the newspaper… I will look at the masthead, this is the pattern'; (xiii) '… if you isolated these two mastheads here, they are different. But when they put it in the newspaper in the same position with the red colour and the whole layout, they are quite similar'; (xiv) 'The reason I can differentiate these two papers is because the graphics and the pictures all around it displayed on the front of the newspaper are different and also you are holding them up you are drawing my attention of the newspaper but just by looking at the two mastheads, it can be difficult to differentiate'. (xv) He 'definitely' did not agree with the proposition that Professor Huang's artwork most resembled the Ching style of Li Shu, nor did he think that the marks which appear in the Chinese characters in Han Dynasty were 'more stokes of the brush and not dots'; (xvi) 'Chinese readers would read and understand the meaning of the applicant's present logo as Australian New Newspaper, and the meaning of the respondents' present logo as Australian Daily Newspaper, and if they read the words they could discern the difference, but if they read it as a logo it would become very easy to confuse… if I just try to comprehend the difference between these two logos in terms of written characters they can understand but if you add to it the artistic composition they would be very easily confused between the two… logos'; (xvii) 'Of the four newspapers currently being printed in the Chinese language and sold in Australia, three use the Li Shu style for their logo (ie the applicant, the respondents and the 2ac Chinese Daily)'; (xviii) the respective current logos of the applicant and respondents, when read out aloud, are not similar, 'once we get to the third character'; and (xix) he agreed that the average student would not be able to tell whether or not the respective current logos were in Han style of Li Shu, or whether either of them 'incorporated some of the changes coming from the Ching style of Li Shu. They would not be able to differentiate whether both of the logos originated from Han Dynasty, but a lot of students would be able to comprehend that both of them are in the form of Li Shu style and that both Li Shu styles are very similar. The conversation of the Li Shu is very similar'. 28 It has been I think appropriate to record so much of Chris Ma's evidence in chief, and of his lengthy cross-examination, partly because of the complexity of his technical evidence as a whole, and partly because the same comprehensively addressed the nature and import of what constitutes the visual impression of written expressions of words and images of the Chinese language, and in particular those words and images the subject of the respective current logos or fonts of the applicant and respondents. Here of course I am required to take account of the variety of circumstances where the category of persons allegedly misled, or liable to be misled, may merely glance at a newsagent's display of the competing newspapers whether alone or side by side, and whether hurriedly or leisurely, being a display exemplified, for instance, by the photograph comprising Exhibit R1. I found Chris Ma to be a knowledgeable and competent expert witness, who gave his evidence frankly, and in an intellectually honest manner. I encountered no reason to reject the thrust or essence of his testimony. 29 The next segment of expert evidence adduced on behalf of the applicant was from Professor Huang, a professional calligrapher, academic artist and writer, who as earlier indicated in these reasons provided the applicant with its current logo. In his affidavit evidence, which was translated by Mr Qiang Wang, a translator accredited by the National Accreditation Authority for Translators and Interpreters, Professor Huang spoke of his ability to speak and read Chinese, and of the basis for his qualification to speak as an expert in the practice of Chinese calligraphy. His national Chinese languages were those of Mandarin and Cantonese. He was engaged for 18 years in the practice of Chinese calligraphy, and in the teaching of calligraphy at universities in China and Australia. It was common ground between the parties that he was expertly qualified to give evidence on the subject of Chinese calligraphy. The introductory thesis of Professor Huang's affidavit testimony, relating generally to Chinese characters and calligraphy, was threefold, as follows: '4. …. Chinese characters themselves represent a concept and are frequently combined to make a concept. A good example is the two Chinese characters of the [a]pplicant's masthead which make up the word "Australia". Individually the first character means "rocky bay" and the second means "continent". For this reason a Chinese reader will gain meaning from the associations and combinations of characters and their position in space on the page. Therefore, Chinese readers will not isolate the particular characters or pay any special attention to those elements, but [look] for meaning in the whole when characters are presented together. 5. Where a particular piece of Chinese calligraphy is also used to indicate a product, such as cooking oil or soy sauce, then, for many readers, the form in which those characters are presented will be more recalled than the particular underlying Chinese characters. An experienced calligrapher can evoke a reader's memory of that cooking oil by using a similar calligraphic style without necessarily using any of the words in the name. To me, this indicates the cultural importance to Chinese readers of calligraphy and the use of fonts. 6. I am aware that much Chinese calligraphy now comes from computers. People have prepared many fonts in various styles which allow for calligraphy to be assembled from the various characters selected. While I do not consider this form of composition as being calligraphy, the results I have seen are reminiscent of some of the best examples of ancient forms.' 30 Thereafter Professor Huang's affidavit made the following observations and expressed the following opinions, specifically in relation to the logo of the applicant's current masthead introduced on 22 October 1996, which he had designed professionally for the applicant; they provide comprehensive insight into the artistic expression of an ancient language, and are appropriate to be recorded literally and in the detail below, rather than by any purported summation on my part: '16. Before I got down to the actual work of designing and writing out the new masthead for the Applicant, I got myself into a deep and long thinking process. I tried to picture the appropriate masthead in my imagination. I tried to feel the likely masthead. I looked at the Applicant's then masthead… 17. I considered that the masthead I was to develop had to be distinctly different from the rest of the newspapers [referring thereby to the three then competing newspapers including that of the applicant] and help to bring out the uniqueness of the Applicant's newspaper in the marketplace. 18. I considered that the Applicant's masthead had to be something that is readily recognisable as a newspaper masthead. 19. The masthead is and was composed of four Chinese characters. As I have explained. Chinese readers read and recognise these characters as a whole, which convey the meaning of the applicant's newspaper. Although it is not a necessity, it is, in my experience, customary for newspaper names to have four characters. I recall that all the newspapers at the time when I developed the Applicant's masthead had four characters. 20. I considered that the masthead of a newspaper had to be a distinctive and eye-catching artistic work that makes the readers recognise the product they choose to buy, and want to buy it if they have not seen the masthead before. I was looking to create a masthead with an attractive force of appeal to Chinese readers. 21. Once I understood the elements and expectations, I then needed to visualise an appropriate font upon which I would base the masthead. Next I had to decide how my preferred font was to be presented to suit the reputation and standing of the Applicant. In this affidavit, I will call this presentation the style of the font. 22. One has to remember that, as a result of thousands of years of development, there are more than ten fonts and a few thousand different styles in Chinese characters. Since it is up to the person who writes out the style, the number of different styles is ever increasing. The font and style represent a particular segment of the history of China and the choice of a particular font and style has its "feeling" representative to the product or thing that it describes. 23. The masthead for a newspaper is like the face of a person. The look can tell a lot about the personality of a newspaper. 24. It took me at least two weeks to settle upon the masthead that the Applicant has now adopted. During this period I worked on my mind to visualise the style of a font and examine the appropriateness of each style of different fonts and its subtle meaning. All the styles were in my mind likened to a library of Chinese characters which projects image to the top of my head. 25. I did not discuss the choice of style of the Applicant's masthead as this is a strictly private property of my own creation and aspiration. My work is backed up by my fame and authority. 26. In or about September 1996 at Brisbane, in the presence of my wife and son, I wrote the 4 characters by using traditional Chinese brush pen in one go on a traditional Chinese rice paper… This became the gift I gave to the Applicant… 27. Professional calligraphers do not write drafts. The final work is produced in one go. It is something associated with the mind of the creator at the moment, after due thinking process. 28. I consider that the masthead I wrote for the applicant is unique because no other Chinese language newspapers anywhere used that style and even that font. Based on my experience of calligraphy, it gives the identity of a wealth of knowledge, well presented yet elegant. It represents a newspaper that offers culturally rich materials for the well-educated. 29. A masthead is an artistic work expressing the identity of a newspaper and it associates a reader's mind to a newspaper's personality. 30. The font I used to reflect the prominent standing of the Applicant in Australia is the Li Shu font which was commonly used in the Han Dynasty (BC 206 to AD 226). This font represents traditional value of the Chinese and the excellence of Chinese culture. It is unique from all the other Chinese newspapers.' The foregoing material, and also what follows immediately below, is relevant in particular to the copyright issues which I am required to resolve. 31 Thereafter Professor Huang drew conclusions in his affidavit upon his comparison of the font of the applicant's current masthead with that of the respondents' current masthead, as follows: '31. I have been requested to examine the First Respondent's new masthead… against the masthead I developed for the Applicant… In my opinion, whoever designed the First Respondent's masthead has copied my work. The reasons are: (a) The First Respondent has chosen a style of Li Shu which is unusual. This is clearly an attempt to match as closely as possible my own design and the style of Li Shu I designed for the Applicant's masthead. (b) Even if a calligrapher or designer wanted to use the Li Shu font, there are numerous other styles which do not look anywhere close to my personal style. (c) In particular, the first 2 characters are an imitation of my personal style. Until seeing the respondent's new masthead. I had never seen such a close copy of the characters which together mean "Australia". (d) As I have explained earlier in this Affidavit, I consider my design of the Applicant's masthead unique. To the best of my knowledge, at the time I designed the Applicant's masthead, the Li Shu font had not been used by any other Chinese language newspapers in Australia.' The opening assertion as to copying of his work must be put aside, since that is one of the issues I must resolve; however I should take into account the four subparagraphs above which followed that assertion, in the course of resolving the issues arising in the proceedings. 32 Counsel for the respondent cross-examined Professor Huang, initially to the effect that the style of font used in his artwork followed the Qing style of Li-Shu, whereas the style of the respondents' current masthead followed the Huang style of Li-Shu. 33 Professor Huang agreed that the four characters of the font forming part of the current masthead of the respondents' newspaper, as adopted on 23 September 2000, followed the Huang Dynasty style of Li Shu, but said that all artistic works in Li Shu style did so as well, asserting in that regard '[a]ll the works in Li-Shu style absorb some influence from Huang Dynasty to Qing Dynasty', and that his work 'combines the Li-Shu in Qing Dynasty and for the same reason the [characters of the respondents' present logo] also are influenced by Li-Shu style in Qing Dynasty'. 34 Professor Huang further agreed that the 'dots' appearing in the respondents' present logo were different to the ones in his work, but said that both were produced with the stroke of a brush pen; his opinion of the significance of the 'dots' of the two competing fonts was as follows: 'I don't think there's any difference between my character and those of the [respondents' current logo] in respect of a dot or stroke. Although the dots of the characters [of the respondents' current logo] look a bit sharper and longer than mine, and mine looks a bit round.' Professor Huang also stated that 'Mr Liu himself' has a number of styles in his calligraphy. 35 Professor Huang agreed that characters created by computer are readily distinctive from those written by hand, and he was able to 'readily detect' that the four characters of the respondents' current font had been created by computer. He characterised the respondents current logo as 'computer generated calligraphic style', which '[i]n a strict sense… cannot be regarded as calligraphy…' and added that '[o]ne can easily detect the two different calligraphy (ie the applicant's and respondents' fonts), on the one hand [there] was the one generated by computer in a Li Shu style, and on the other hand [as] handwritten in Li Shu style'. 36 When his attention was returned to the three 'dots' in the first character of each of the two fonts currently used by the parties, Professor Huang further said as follows: 'Although the three dots are not the same, the structure of the two characters are the same. From their overall appearances one would tell they are in the same style. … Although the images look different, the overall appearance[s] are the same, when one looks at the calligraphy one looks at the overall appearance rather than the individual components.' 37 As to the fourth character of the two current fonts, Professor Huang said as follows (as literally transcribed): 'Although there is slight difference in image, they are different so far as the fifth stroke in both the – the second characters of both mastheads are different. All the rest of the strokes are the same.' 38 When questioned specifically as to the third character of the respondents' font, Professor Huang gave the following evidence: (i) he agreed that '[w]hat sets the two newspapers apart is that third character in both…'; (ii) however he denied the proposition that '[b]ecause Chinese readers, when looking for [news]papers, commonly reduce the description of a paper down from the four characters depicted to the two characters which tells the papers apart…', and said that '[o]ne usually looks at the [first] two characters O Chau; once these two characters look the same one would think these are the same newspapers; I'm talking about calligraphy'; he further testified that '… I don't deny the fact that the only two characters which distinguish the two newspapers are the last two characters however from their overall appearance these two logos look similar'. Nevertheless he added that the styles of Chinese calligraphy of the respondents' current and former logos 'differ' from the style of the applicant's current logo, doubtless for the reasons which appear at or about the commencement of my summary of his cross-examination. My summation of Professor Huang's evidence given orally was that the same was provided carefully and competently and without apparent partisanship, and should be accepted in principle and in detail. 39 The applicant also adduced expert evidence from Mr Alex Ma ('Alex Ma'), a graphic designer and specialist in cross-cultural communications, who was fluent in the Cantonese dialect. He expressed the view in his affidavit that the fonts of the current logos appearing at the top of the front page of each of the applicant's and respondents' newspapers were 'the same typeface family Li Shu', and further that '[a]s a Chinese speaker, I consider the characters of a newspaper masthead to be equivalent to a logo'. He further said that '[j]ust as in English, so too for Chinese characters, there exist typography books which provide examples of many different fonts for individual Chinese characters'. Exhibited to his affidavit were extracts from a typography book displaying versions of various fonts for the following characters forming part of the respective fonts of the applicant's newspapers, namely 'Chau' (19), 'Yat' (32), 'Sun' (39), 'Pao' (54). 40 In the course his of cross-examination, Alex Ma did not accept as a general proposition that most of the samples he provided were not popular and rarely used. He did accept that a computer program is one of the ways to produce Chinese calligraphy, but was uncertain as to whether the characters of the respondents' logo had been produced by a computer generated image; however he was '100 per cent' certain that the applicant's logo had been produced by an artist. He did not 'quite' accept that the Li Shu style of the respondents' logo was different to that of the applicant's logo, asserting in that regard the '[s]ame style, same typeface but different creator', and further that '… in my profession, when I say style or typeface, it is the same family then it is the same style'. He agreed that the applicant, the respondents, and 2ac Chinese Daily use the same Li Shu style. 41 In answer to questions of mine, Alex Ma gave the following evidence: 'Why is it another story?… Because sir, with the logo you look at the whole thing as a graphics. Let's say the locals change a little bit. Sometimes you won't tell. Like the Kangaroo may be they face this way or this way, you won't tell. But when you look you just scantily look at it, you wouldn't tell the difference. A person that picks up a newspaper in a newsagency, in your opinion what does he look at as… a Chinese person… What is it that he notices, in your opinion?… I think in my opinion is that they will scan it and look at the graphics. They will read the whole work. They look at it as one?---Yes, they just look at the whole thing as one piece of graphics. Not look at---?---No, they won't read it word by word. Not look at them individually?---No?' 42 In the course of further cross-examination of Alex Ma in relation to the respondents' logo, the following testimony appears: 'Just looking at the graphics you can really tell, it sticks out, does it, the third character?---Because you have got to look at the graphics because three out of four is the same style. So I might confuse myself as well. But you can there the third character is markedly different in both, isn't it?---If I read it word by word I can tell. We didn't say read it word by word. Just by way of example, if I show you these two papers from this distance of 10 feet you can see the third character quite readily, can't you?---Yes, I can. If I read it word by word I can--- But even not looking at it word by word, just glancing at it, the third character is distinctly different, isn't it?---It is hard for me just to look at one word because I look at the whole thing. Looing at the whole thing the third character is markedly different, isn't it?---Yes, it's true. It jumps out at you, doesn't it?---If I just look at one work, it's true. Well, even looking at the four together you can see the third one, you can't miss seeing the third one on the Chinese Herald, can you?---But the other three is the same to me. It's more than just one word.' I thought that the evidence of Alex Ma was essentially consistent with that given by Chris Ma and Professor Huang, and was given both frankly and fairly. The evidence of the respondents' directors in detailed outline 43 I have of course already identified Mr Roger Huang as the decision-maker for the respondents. In his first affidavit (sworn 9 January 2001), being the only affidavit evidence placed on behalf of the first (and then only) respondent before Whitlam J in the initial interlocutory proceedings of this litigation, he asserted that '[t]he decision to change the masthead was not one made by me on behalf of the Chinese Press to copy that of the Chinese Daily but one which resulted from the use of picking University of Peking Character and Editorial Software of those Chinese characters and the newspaper which presently forms the Chinese Heralds masthead. This type set or font was what was produced from the use of that software over which I had no choice or intentionally (sic) selection'. That 'no choice' theme advanced by Mr Huang attracted substantial controversy. 44 When cross-examined in the proceedings before me upon that 'no choice' assertion, Mr Huang gave the following purported explanation: 'The reason I said that [was] because there is limited availability on the fonts available at that time. That's why I say I don't have too much choice. I had to base on what I have from Peking University. Peking University find us software available. … What I mean is, limited choice, which means among that choice, or the limit is the only choice I can have. I put it more specifically. Generally you have this or four different fonts but there is only one [which] is good enough to make a masthead. Some of the fonts may not [be] good enough to make a masthead. That's what I mean.' 45 That somewhat confusing answer provoked the following question on my part, and the following answer for Mr Huang: 'You had a choice to leave intact for the use of your publication, did you not, the font which came into existence on 1 November 1997---That's correct. But it is a very limited font.' Mr Huang did not appear to explain what he meant by a 'very limited font'. It was not limited in any event to the extent, as I have earlier recorded, that the respondents continued to portray in certain contexts their former or previous font, and in particular the first character thereof, in various public or promotional circumstances. 46 Senior counsel for the applicant then put the following questions to Mr Huang, and received the following somewhat confused, if not also unsatisfactory answer: 'Why make the change?---The reason I make a change because originally we are using the handwriting or hand brush to make a masthead. It created a problem originally when we started using the computer software to do the page maker. Because when you use the brush handwriting you store in the memory is under picture from which occupy a lot of the memory and very difficult to use when you need it. But by using the Founder font it's a textural – so it very easy for operator to pick up immediately to use. Particularly when you have some page in the pages which you… where often like the Sydney Morning Herald they are using in their art very often. It has become significant improve on that. That's the reason we want to change to the computer masthead instead of use the hand brush. Also I would like to repeat, are we talking about three or four years ago. There is no Chinese newspaper are using the computer to make the masthead. But now among the four Chinese newspaper three of them using the computer to make the masthead. I think the major reason going to have more and more people using the computer software to make the masthead instead of using the traditional hand brush. That's the reason we want to change to the computer software masthead. That's the reason you wanted to change, is it?---That's right. Where is that in any of these affidavits?---I cannot remember.' He repeated subsequently in the course of cross-examination the remarkable assertion that 'its just a change in the computer'. 47 What that answer left unexplained in any event was the reason why the respondents' former logo (inferentially) could not have been computerised in the manner to the extent to which the respondents' present logo has been computerised. I have earlier recorded Chris Ma's uncontroversial evidence as to the process of computerising, for instance, a Chinese logo or masthead. When subsequently asked why no such explanation as set out in the preceding paragraph above was provided in his affidavit evidence, Mr Huang answered that 'I do not remember I explain to my solicitor but I don't know I could not find it in the affidavit'. For a person as intelligent, astute and conscious of detail as was Mr Roger Huang, that response was hardly satisfactory. 48 Mr Huang spoke in his second affidavit (sworn 7 November 2002) of his education in Taiwan, first at a secondary level, where he studied Chinese calligraphy in the traditional Mandarin style; he added that such style of calligraphy was also then still being taught in Hong Kong, though not the 'simplified' Pekinese style taught in Mainland China by their high schools. Thereafter he obtained a degree of Bachelor of Arts at the World College of Journalism in Taipei. Subsequently he obtained a degree in business management from the University of Northern Colorado, and after that a master's degree in business administration from the Pennsylvania State University. On his return to Taiwan, he was trained and gained practical experience in journalism, prior to his migration to Australia in 1990 with his wife. He acquired the Daily Chinese Herald in 1991. Later he said that he incorporated 'Chinese Press' and transferred to Chinese Press the business of publishing the Daily Chinese Herald. In May 2001, Chinese Press transferred the business of publishing the Daily Chinese Herald to Chinese Press, which moved the centre of its business operations to Melbourne, where it has commenced to print a number of new newspapers. Mr Huang asserted that '[t]he Chinese characters in the masthead of the [Daily Chinese Herald] are not a piece of artwork and have not been created by an artist', and further that '[t]he characters used in the [respondents'] masthead were created from using a computer software package, "Founder Wits Version 3.0A", readily obtainable by members of the public and which I initially obtained in or about 1993 and continued to upgrade throughout the latter part of 1999 and which I further upgraded on or about 15 September 1999 at a cost of US$10,500.00 from Founder (Hong Kong) Limited'. The invoice was tendered in evidence as Exhibit R22. As articulated by counsel for the respondents, the respondents' logo introduced on 25 September 2000 is a computer generated image where the computer software has been manipulated to generate the image sought, which was then copied onto the heading of the respondents' newspaper. 49 Mr Huang thereafter provided a purported analysis of the current mastheads of the applicant's newspaper and of the respondents' newspaper, by reference to their respective logos. He asserted that '[t]he first character in the [applicant's] masthead contains dots dabbed on to the canvas within the 4 quadrants of that character whereas the first character in the respondents' masthead contains brush stokes stuck onto the page and not dots dabbed onto the page'. After further elaboration on that 'dots' theme, he said that he was 'able to identify this masthead to be the work of Master Huang (being the person to whom I have been referring as Professor Huang) by the manner in which he has applied the brush strokes to the canvas on which he was working at the time…'; Mr Huang made the assertion that '… there cannot be confusion that this particular artist created the masthead for the [respondents] as the calligraphy is discernibly different'. 50 Mr Huang's detailed explanation contained in his second affidavit as to why the calligraphy was 'discernibly different' was as follows (his references to ACD being of course to the applicant's English newspaper title the Australian Chinese Daily, and to DCH being of course the respondents' English newspaper title the Daily Chinese Herald): '19. The base of the first character to the bottom right corner has a brush stroke struck to the page with a gap between that stroke and that portion of the character above. The first character in the ACD masthead has a series of interconnecting and connecting strokes without any break. The first character in the DCH masthead has more a box shape whereas the first character in the ACD masthead is slimmer and more rectangular. By looking at all characters I can tell and it is my opinion that the readers can readily tell that the ACD masthead characters have been created by a brush as the lines are not straight or sharp and show the wavering brush in the artists hand as the edges are not as sharply defined. The computer cannot create the expressed artwork in this way. The artwork could be copies but not created in the manner that this artist has created. 20. The placements of the dots to the left hand side of the first character are in different positions. The second character likewise has the 3 strokes on the left hand side in a different position to the markings towards the right hand side of those 3 strokes. The portion of the 2nd character, which resembles a "Y", extends the base of that mark in the DCH masthead below the bottom 3rd stroke whereas the bottom dot in the ACD masthead is placed alongside of the base of that "Y" mark. 21. The most significant variance leaving aside the 3rd character, which is completely different in meaning, appearance and style, is the 4th character. The mark to the left hand side of that character in the DCH masthead has a straight line moving from the top to the bottom with a circle toward the centre. The fourth character in the DCH masthead displays all together 4 horizontal cross strokes whereas the fourth character in the ACD masthead has 5 horizontal cross strokes with a square towards the centre with the base of the vertical stroke curved to the left. The central mark to that character in the DCH has a vertical stroke with a triangular shape attached toward the top right. In the ACD the portion of the central mark has a curved hook to the top right part of the mark. In fourth character of the masthead of the ACD there is a portion of the central mark towards the middle right hand side that is connected to a vertical stroke. The fourth character of the DCH masthead does not have any connecting stroke to the vertical central mark. The DCH masthead does however display to the bottom right hand side of that character a mark partly resembling an "X". 22. These aspects of the two mastheads clearly distinguish the form and style of the calligraphy. It is my view that the readers of Chinese newspapers as well as myself could distinguish the [applicant's] masthead as a piece or artwork of Master Huang, a well known Chinese calligraphist, as distinct from a set of computer generated characters which make up the Chinese calligraphy portion of the [respondents'] masthead. 23. For many years the Respondent had published the DCH containing the first two characters, which translate into the word "Australian" in the English Language. It has been my experience when discussing matters with readers that they always look to the last two characters to distinguish the two newspapers. The last two characters in the ACD masthead translate into the words "New Newspaper" whereas in the DCH they translate into the words "Daily Newspaper". I have had discussions over the years with readers of ACD and DCH and they have never expressed to me, at any time, that they, when selecting a particular newspaper to purchase, only had regard to the first 2 Chinese characters of the DCH or ACD. 24. It is also my view that even if the last 2 characters were covered over, the first 2 characters are so significantly different in their calligraphy, that it would be akin to mistaking a piece of art with a computer generated image. I do not consider it reasonable to suggest a person would look at an original Picasso painting and mistake that for an image that could be generated by a child stroking keyboards on a computer to create an abstract image. It is my view the artist responsible for creating this artwork would not accept the Applicant's assertion that the Respondent has in any way either attempted or succeeded in supplicating his artwork. The image created by a computer is perfectly balanced within a square grid whereas the artist's impression of the characters is imperfectly balanced and extends beyond the perfectly square grid within which the computer-generated characters are placed.' 51 I observe in passing that the reported cases relating to breach of trade marks, generally speaking, have not involved precise or exact copying, the issue being the likely or possible reaction of the inattentive consumer, or of the consumer lacking precision in his or her recollection of something previously seen or noticed to similar effect of a subject matter of trade mark or copyright protection. The contrast between the exactitude of Mr Huang's above descriptions of the respective logos of the parties, and the descriptions of the same material by the applicant's experts, is therefore significant. Inattentive buyers of the respective newspapers of the parties would not undertake such a minute depth of scrutiny of either logo prior to making a purchase of either newspaper. 52 In his third affidavit made on 13 November 1992 Mr Huang advanced certain startling new material (the reference below to 'DCH' is of course to the respondents' newspaper, and the reference below to 'ACD' is of course to the applicant's newspaper): '3. …I say it is my view that the readers of the DCD and the ACD will either purchase the newspapers by looking at the last two characters or otherwise by looking at the four characters making up the masthead in whole. …I say that [the respondents] have no association or affiliation with Founder (Hong Kong) Limited and have no involvement whatsoever in the creation of the Li-er font style contained in the WITS 3.0A page making programme produced by Founder Hong Kong Peking Limited. 5. In 1997 an employee of DCH, Nadia Yu, approached me and indicated that HUANG had offered to create a new masthead for DCH. I said words to the effect: "If he wants to do it he can do it". About two days later Nadia Yu presented me with the DCH masthead, prepared by HUANG, in his style of calligraphy. I looked at it and said words to the effect: "With this masthead we are not able to represent the spirit of our newspapers. I am sorry we cannot use it". 6. I did not want to use the masthead created by HUANG as it did not represent the spirit of the newspaper and it would not have been reproduced in distinct, and sharp fashion on the front page of the DCH. 7. A few months later I returned the art work at the request of HUANG.' 53 The above references by Mr Huang to 'HUANG' were to Professor Huang, the creator of the calligraphy for the applicant's masthead. The respondents' abovementioned employee Nadia Yu did not provide any evidence in the proceedings. No description was seemingly proffered as to what he meant by 'the spirit of our newspapers'. In any event, Mr Huang added the following in his second affidavit: 'I am presently the President of the Australian Chinese Writers Association. I became President of the Australian Chinese Writers Association because of my expertise and understanding of Chinese culture and literature and my knowledge of the development and history of Chinese language. I am in charge of the development of Chinese culture in Australia and assist Chinese writers to publish their works. My involvement in the Australian Chinese Writers Association has enhanced my ability to consider matters of a Chinese literary nature including Chinese calligraphy.' 54 The course of cross-examination upon the circumstances in which Mr Huang changed the respondents' logo on 23 September 2000 produced some at least confusing testimony on Mr Huang's part. The starting point of the cross-examination was Mr Huang's 'no choice' theme of his first affidavit, which I have already recorded. Thereafter the following matters were said by Mr Huang: (i) he could not remember who presented to him for selection the fonts from which he chose that which became the respondents' logo as from 23 September 2000; (ii) he could not remember whether he discussed with his wife Mrs Huang the choice of the logo adopted for the respondents' masthead as from 23 September 2000, albeit that she was the respondents' general manager, and the other, or one of the other, director(s) of the respondents, perhaps throughout the period from the acquisition of the respondents' newspaper from its former owners in 1992 to date; in any event, he claimed that it was his decision to make the relevant change effective from 23 September 2000; he could not remember consulting with Mr Kevin Chen, the respondents' graphic/layout designer whose evidence will later be addressed, on the same subject of change of logo; and (iii) he had met Professor Huang, whom he knew to be a famous Chinese calligrapher, 'a long, long time ago'; when challenged as to the truth or accuracy of that evidence, he said '… even if I met him probably it would only be [for a] very, very short period of time… probably once in our conference room… in Sydney… [saying] hello and those sorts of things'; he did not indicate whether he was unclear as to what he had in mind was the occasion in 1997 referred to in his third affidavit, which I have earlier summarised. The credibility of those three aspects of Mr Huang's evidence in particular was put in issue in the proceedings. 55 In response to a written request from the applicant's solicitors to produce, as on discovery, all documents describing or relating to the respondents' decision to change its masthead with effect from about September 2000, including 'position papers, presentations, competitive strategy documents, research material, board papers and/or memorandum prepared by third parties, entities related to the applicant and/or marketing, merchandising, product development departments and/or their equivalent', nothing appears to have been produced by the respondents. Moreover Mr Huang denied having ever seen the font version document attached to Mr Chen's affidavit, to which reference will later be made. 56 Mr Huang's attention was then redirected to par 22 of his second affidavit (earlier extracted in full above) and his cross-examination continued as follows: 'What you were indicating there was that in your view the art of Professor Huang or Master Huang, as you referred to him, was so well known as to be unmistakable?---That's correct. That is quite contrary to the evidence you gave a few moment (sic) ago to his Honour wasn't it?---I may loose (sic) my memory. … … is… paragraph 22… true, is that what you are saying?---No, 22 is not true. So paragraph 22 is wrong is it?---Yes.' Mr Huang thereafter said that he had only read this affidavit '[a] long time ago', but then changed that testimony and said '… I read it a few day ago'. All that necessarily occasioned further problems for the credibility of his evidence generally in the proceedings. 57 Mr Huang could not remember who gave him the fonts from which he made the selection for the respondents' masthead on 23 September 2000, nor could he remember speaking to his wife about changing the same. He said 'I only can recall… someone gave me a list of the four different kind of characters…'. When asked where the list was to be found, he said 'I don't think I keep it. Probably in the graphic department or someone', and that he '[p]robably] thew it away already'. When further pressed on the subject as to how the applicant's present font came to be selected, he said 'I only can remember he gave me a list with four different characters and I look at it. Obviously three of them is out of the equation because the line is so thin. If (sic) not suitable for to make a masthead, that's why I pick up only one'. The absence of identification of that male person adds to the dubious credibility of that purported explanation. 58 The list of fonts attached to Mr Kevin Chen's affidavit (infra) was placed before Mr Huang at the commencement of his cross-examination on the following day. Mr Huang asserted, albeit consistently with his testimony on the previous day, that he had not seen that document. As I have already recorded, Mr Huang initially maintained that he was given 'no choice' about what font could be used for the respondents' new masthead, though he subsequently indicated that he was given a choice between four fonts. The thrust of that evidence further changed in cross-examination to a significant extent. Mr Huang would not concede that the material attached to Mr Kevin Chen's affidavit indicated that a choice of 28 fonts had been presented to the respondents, though by that time he had conceded that the number involved was 'probably between 12 to 14', the remaining numbers being allegedly duplicates. Mr Huang identified the twenty-third font as that chosen for the applicant's masthead. I extract below certain further illustrations of his cross-examination on that font, being of course that introduced on 23 September 2000, which demonstrated in my opinion further problems for the integrity of the principal themes of his evidence: 'Would you agree that the Li Er font, appearing in the second column, number 8 from the top of the page, that is the font that most closely resembles the applicant's logo?--- … Yes. If Mr Chen suggested he gave you that document for the purpose of choosing a font, you say he is wrong do you?---Yes. So you say that he gave you a document that had four fonts, each font repeated 30 times?---That's correct. … And you say that you were given four fonts duplicated 30 times each?---I cannot remember if it was 30 times but many times that's what I can remember, many, many times. I cannot count it, I cannot say 30 times is correct or not. … What I am suggesting to you is that you were given a wide selection of fonts and you pointed to the Li Er font and said I want that one?---No I only give four fonts. … You deliberately chose not to explain in your affidavits why you changed the masthead, didn't you?---I think I just probably neglected to make that point in my affidavit.' 59 I am unable to accept the credibility of that extraordinary purported account as to matters so critical to the reasons or reasons for the change of the respondents' font on 23 September 2000. 60 When further challenged upon his assertion that '[b]asically we don't compete with other newspapers', because the respondents' newspaper operated 'basically' in the 'Taiwanese market', that is to say the market comprising people who have moved from Taiwan to Australia, and upon his further assertion that 'I compete with nobody', he was confronted with the circumstance that the applicant's newspaper and the respondents newspaper each sold for the same price; when asked why he did not charge more, he gave the unlikely reason '[b]ecause my friends is (sic) going to call me and complain'. 61 Focusing thereafter on the change of the respondents' font on 23 September 2000, the following further unsatisfactory evidence was given under cross-examination by Mr Huang: 'So that the position is that in September 2000 when you changed the font and style of your newspaper's logo, you went to a Li Shu style, do you agree with that?---No. You didn't go to a Li style?---I go to Li Bian. … But I took you to document a little earlier that indicated you went to Li style?---In the Li Shu and Li Bian there is a little bit different… the general public will probably understand that's only Li Shu but for the professional people you know its different… Li Bian that is simply a slight modification of Li style isn't it?---No Bian means change… I would like to emphasis… this come from Li Shu is a family but didn't change so much that they need a new classification… called Li Bian… okay, Li Bian is come from Li Shu.' No reference had been made to the Li Bian style by Mr Huang until that answer in cross-examination. Whatever might constitute the so-called 'little bit' of difference of Li Bian from the Li Chu style, the credibility of that belated elaboration upon the origins of the respondents' calligraphy is of obvious concern. 62 Thereafter Mr Huang agreed in any event that the Sing Tao and the now discontinued Independence Daily newspapers did not use a logo in the Li-Shu style, and further that although 2ac Chinese Daily used a Li-Shu style font, the same 'would not give rise to any confusion'. 63 Mr Huang was next questioned as to why the respondents discontinued the use of the Chinese characters pronounced Wah Sing in the respondents' font on 1 November 1997, and substituted those pronounced O Chau; he asserted the reason to be that '[i]n 1996, we start to develop the internet and when you get into the newspaper internet you are in international business. You want international readers looking, this newspaper come from Australia…'. He agreed that no such evidence was provided in his affidavit. The Chinese characters pronounced O Chau had appeared in the applicant's logo since 24 December 1994 (see again Exhibit A12). 64 Towards the close of his cross-examination on 13 December 2002, Mr Huang's attention was drawn to an article appearing in the respondents' publication Oz Weekly entitled 'Law Suit the Last Thing One Will Do', which was one of seven articles published in the respondents' newspaper, or its weekend inset Oz Weekly, attached to a further affidavit of Quiang Wang dated 1 November 2001. Mr Huang admitted to being the author of that article, albeit by his use of a pen name. The theme of the article was evidently founded on the respondents' successful resistance of the interlocutory proceedings before Whitlam J. The inference reasonably open to be drawn is that the article contained a veiled threat to report the applicant to the Australian Taxation Office for an unspecified taxation offence, with a view to discouraging the applicant from pursuing the present proceedings to a final hearing. Counsel for the respondents cross-examined Mr Wang as to the accuracy of aspects of his translations of those articles, in my opinion without success, and notwithstanding the absence of any contrary or rectifying translations tendered beforehand by the respondents. The publication of those articles was hardly a commendable course for the respondents to have taken in the context of this litigation, but I will say no more. 65 Mr Huang's attention was thereafter returned to the work relevantly of Professor Huang, and in particular as to whether he had ever met Professor Huang, and if so, in what circumstance and for what purpose. Mr Huang's response was at best confusing or ambiguous, for the following reasons: (i) Mr Huang said he was '…not able to identify his style but if you're talking about his work, yes I can identify'; he agreed that before the year 2000 he did not know Professor Huang, but that in '[t]he year 2000 I started to know. Before the year 2000 I did not know who is Mr Huang…'; (ii) Mr Huang next said that he met Professor Huang only once, and added '…I cannot remember exactly which year'; subsequently he agreed that he could not remember meeting Professor Huang, and if he did, whether the meeting was before or after the applicant's change of logo on 23 September 2000; thereafter he asserted that Professor Huang did create a masthead for the respondents' newspaper, but he was thereupon referred to the assertion made in his third affidavit that he returned Professor Huang's masthead to him; (iii) after next being referred to the circumstance that the respondents' font, earlier adopted on 1 November 1997, and the respondents' even earlier font adopted on 9 December 1992, were both Hsing-Shu style (see again Exhibit A12), it was put to Mr Huang that the respondents' most recent font adopted on 23 September 2000 was not Li Bien but Li Er, and that the latter change was made because '…people might be confused if you were to move to a font that was the same as or close to that being used for the [applicant's] newspaper'; Mr Huang's response was that 'I did not even think about that'; (iv) nevertheless Mr Huang accepted as 'correct' the proposition that '…of all the different fonts on your computer system in the year 2000 the one that came closest to matching that on the applicant's newspaper was Li Er'; thereafter he was referred again to the assertion in his third affidavit to the effect that Professor Huang had prepared a masthead for the respondents, and further that he returned the same a few months later at Professor Huang's request. The evident inconsistencies in the foregoing evidence of Mr Huang, and the adverse implications to his credibility evident therein, need no further elaboration. 66 Mr Huang was also referred to his affidavit evidence placed before Whitlam J in the initial interlocutory proceedings to the effect that the current circulation of the respondents' newspaper was 'between 8,000 to 12,000'; and it was put to him that the respondents never distributed on any week day, or at the weekend, even the minimum figure of 8000 copies before he provided that evidence in January 2001, and further that the true circulation figures at that time were about 4700 copies per issue; Mr Huang agreed that prior to altering his affidavit reference to '8000 to 12,000', the circulation figure inserted in that affidavit had been 6000, but he disagreed with the suggested daily print-out of the respondents' newspaper as being as low as 4700 copies; he was then however referred to a printing invoice dated 20 January 2001 for 2000 copies and was challenged in any event as to the accuracy of his estimate of '8000 to 12,000'. Mr Huang maintained nevertheless that 'including Melbourne', his estimated circulation figures were accurate, and he denied any exaggeration. When thereupon asked whether he could arrange for his wife to bring to court the respondents' records of the circulation figures on the following day, when she was to be cross-examined, Mr Huang said merely 'I don't know. I cannot answer for her. I'd have to talk to her'. No material referable to circulation figures was subsequently produced on behalf of the respondents. Once again, I would infer, the spectre of at least serious exaggeration pervaded Mr Huang's testimony to the Court. Generally I am obliged to observe that Mr Huang's demeanour and manner adopted in the course of his cross-examination did not assist the credibility of his evidence. 67 Mr Huang's attention was next drawn to the application for registration as a trademark of the respondents' current logo which asserted that such trademark may be translated into English as 'The Daily Chinese Herald'. When challenged upon the correctness of that translation, which should of course have been disclosed as 'Australian Daily Newspaper' (see again Exhibit A12), Mr Huang responded falteringly '[t]hat's how, when I put in the application'; when asked whether the translation was actually false, he responded '[m]ay not exactly'. Thereafter the cross-examination continued as follows: 'You know that is quite wrong'---Yes. And you know that when translated into English they mean Australian Daily Newspaper---Yes. And you knew that when you completed this declaration didn't you?---Yes. And you knew when you signed that document that you were making a false statement to the Trademarks Office didn't you?---No. Was that a mistake by you?---No, because that's what I would [have] told to you?' Mr Huang was unable to remember who told him to fill in that form in that way, except that it was 'a legal advisor', though 'not this one'. 68 Mr Huang was subsequently questioned as follows: 'When you changed from Wah Sing Yat Pao to O Chau Yat Pao in November 1997 you knew… that you were moving to a name that was not very different to that which was being used by Australian Chinese Daily?---That's correct. You knew didn't you in those circumstances it would be important to ensure that the logo was distinctive and different to that of Australian Chinese Daily?---I have not think about that at all, I had not think about a logo at all. Never thought about the logo?---No, never.' 69 A subject of further cross-examination of Mr Huang of significance was a circular sent by the respondents to newsagents dated 19 October 2001 on a letterhead bearing at the top thereof reference to 'Daily Chinese Herald', 'Community News', 'Property Weekly', 'Oz Weekly' and 'Weekly Message', and their respective Chinese logos. The circular was addressed unspecifically to 'The Newsagent', and proceeded as follows: 'Dear Sir or Madam We learnt recently that you have received letters from Fastpack Distribution Pty Limited seeking information about circulation figures of the 4 major daily Chinese newspapers in your newsagent. Please kindly be advised that we consider the circulation number is our company's confidential information, as our agent, we expect you to co-operate with us to refuse to disclose your sales record of our paper to Fastpack Distribution P/L without our consent. Thank you very much Daily Chinese Herald.' 70 I put aside the issue raised between the parties in argument, in the course of cross-examination of Mr Huang, to the effect that a newsagent's sales/circulation figures, even if confidential at all, would be confidential merely to the newsagent, and not the newspaper publisher (here of course the respondents), a proposition I would have thought in any event to be sound. I also put aside Mr Huang's professed lack of knowledge of the sending of this circular, which I find in any event to be difficult to comprehend. What is of particular concern is the fact that the font appearing above 'Daily Chinese Herald' on the letterhead was the respondents' Hsing-Shu masthead introduced on 1 November 1997, and not its current masthead introduced on 23 September 2000. When questioned in relation to that use of the respondents' former font in the above context, Mr Huang asserted repeatedly that the same 'cannot be used', and subsequently '[i]t would be extremely difficult to use', for the reason that '… it is in the graphic form, it is not in text form. We cannot go back to the graphic fount (sic). It is going to create a lot of trouble for us'. 71 In that context, Mr Huang was next referred to page 22 of the edition of the respondents' newspaper published on 6 December 2002, where at the top of the right hand corner appeared O Chau Yat Pao written in Li style, and where at the bottom right hand side appeared O Chau Yat Pao written in Hsing-Shu style. The following further cross-examination ensued: 'That font is still being used in your newspaper, isn't it?---That graphic is still used in my newspaper. The whole advertising is memory in the computer as a graphic. You have a picture in memory in the computer. It is not a text form. You agree… that that font is still used in your newspaper?---Yes. And it would be quite wrong to suggest that that font can't be used in your newspaper anymore, due to some technical difficulty?---That would be extremely difficult. Because it is in graphical form.' Once again, Mr Huang was thereby confronted with conduct on the part of the respondents bearing adversely upon the credibility of his asserted reason for the critical change of the respondents' masthead on 23 September 2000. 72 The respondents were required to answer an interrogatory, in relation to the design of the respondents' masthead, as to 'how the Respondent's Masthead was designed'; the answer of the respondents' reproduced in Exhibit 24, was as follows: 'A Celeron had installed on its hard drive 42 different font styles of Chinese characters. The software installed on this computer has 9 styles of font, which could be viewed at the time on a monitor and 33 styles of font, which could not be viewed on that monitor as at July/August 2000. The selection of a sample of font styles was made and chosen by Mr Kevin Chen, who commanded via a keyboard and mouse, a particular printer to create a form of the sample of Chinese character font styles. It is understood that the sample was printed onto an A4 sheet of paper and shown to Mr Roger Huang who viewed the A4 sheet of paper and in the presence of Mr Chen pointed to and selected the Li-er style of font, which was later used at the time of printing the altered Masthead of the First Respondent's newspaper. The selection was made from one of the 42 styles of Chinese character fonts provided for on the Founder Wits Version 3.0A software, the First Respondent had acquired.' Mrs Huang, and not Mr Huang as might have been expected, verified the respondents' answers to interrogatories. She sought to explain her above answer to interrogatories confusingly to the effect that 'I think because my solicitor asked me and signed by me so I think that should be my decision'. 73 The affidavit testimony in chief of Mrs Huang was remarkably brief and confined in scope, bearing in mind her status and role in the governance of the respondents as a director and the general manager; I set out below the substance of her sole affidavit filed in the proceedings (sworn 12 November 2002): '2. On or about 1992/1993 the First Respondent purchased from a computer software and hardware supplier known as CX Computers, the Chinese language pagemaking computer program known as Founder (Hong Kong) WITS 3.0A. 3. CX Computers was responsible for the installation of the WITS 3.0A program in the computers of the First Respondent. The installation of the WITS 3.0A program was conducted at the premises of CX Computers. CX Computers would also install a security "Dongle" in each computer containing the WITS 3.0A program. 4. In or about 2000 the First Respondent purchased a new pagemaking program directly from Founder (Hong Kong) known as FITS. Due to technical difficulties it took a long while before the FITS program could be successfully installed. I understand that the FITS program is compatible with all the new computers used for the production of the Daily Chinese Herald.' Mrs Huang's account in her oral evidence of her duties and responsibilities implied a more confined executive role in comparison to that of her husband, they are '… advertising for the company and also signing cheques' for the respondents newspaper, and also for 'several smaller newspaper(s) and one magazine'; in addition she said she was '… responsible for the training of the… sales staff'. 74 As in the case of her husband Mr Roger Huang, Mrs Huang migrated from Taiwan to Australia. She impressed me as a pleasant and intelligent woman, who appeared to be apprehensive about providing any testimony which might conceivably displease her husband. That perceptible apprehension on her part tended to diminish her credibility. At an early stage of her cross-examination, consistently with the respondents' case as to a very dominant Taiwanese readership, Mrs Huang stated that '[b]ecause our readers are mainly Taiwan people so I was responsible for… advertising for the Taiwan readers'; when pressed for clarification of that answer, she added however the following: 'Our advertising department is divided by different parts, such as mainland China, Hong Kong, Taiwan, and I was responsible for Taiwan readers and as for mainland China and Hong Kong we have other staff looking after those parts.' 75 Mr Huang spoke in the course of her cross-examination of the exigencies of competition between the Chinese language newspapers in Australia as follows (I have earlier referred to certain aspects of her evidence on that subject): (i) the respondents' newspaper competed for Hong Kong media advertising in Australia with the Sing Tao newspaper; (ii) the respondents' newspaper more recently competed for mainland China advertising with the 2ac Chinese Daily; prior to its emergence in the market, the respondents' newspaper had competed with the applicant's newspaper and Sing Tao; 76 When questioned as to her awareness that the applicant's newspaper published content for the interest of Taiwanese Chinese, as well as for mainland Chinese and Hong Kong Chinese, she asserted: 'I know every newspaper does so. But the Taiwan content is very very limited because the Taiwanese readers are very limited. Their target group is not Taiwanese readers.' 77 When asked whether she agreed that the applicant's newspaper devoted one and one-half pages of every edition, and sometimes more, to Taiwanese matters, she answered '[t]hey do have contents related to Taiwan but exactly how many pages I am not really sure. I don't count it'. She subsequently said that the respondents' newspaper had 'reached at least two pages sometimes more than two pages [of Taiwanese news]'. Further cross-examination on the subject disclosed a degree of advocacy on her part of the respondents' case as to a Taiwanese emphasis of the respondents' newspaper. 78 Mrs Huang professed no recall of the change of the logo of the respondents' newspaper to its present logo on 23 September 2000, for the reason that '…I was not responsible for the area', notwithstanding that she was involved in the selling of advertising in the respondents' newspaper bearing the name 'O Chau Yat Pao'; she repeated that she was not consulted in relation to the change of the respondents' masthead on 23 September 2000; subsequently however she added that Mr Huang '… only mentioned to me that in order to do that website newspaper it was not good and necessary to have the name changed into the name as it is now and I thought it was a good idea, I didn't object to it so he just went ahead and did it'. 79 She sought to explain that Wah Sing was discarded from the masthead of the respondents' newspaper in favour of O Chau '… because… we were promoting a newspaper on the website so that readers from all over the world can go to the website or network and read our newspaper, so the best name for the newspaper should be the "Australian Chinese Herald". That's why we change it to that name'. She also said that '… I do not think or did not think why it had anything to do with [the applicant's newspaper]'. I would characterise those answers in particular as having been rehearsed by her in advance and as being in the nature merely of advocacy of the respondents' case. 80 Mrs Huang thereafter said that '… Roger Huang is the number one director in the company. Whatever he decides he didn't have to care whether who will give objection or who agree or disagree, he can just go ahead and do it'. That particular statement to my observation said it all, in terms of the business relationship between Mr and Mrs Huang. I would conclude that Mr Huang was the dominant, if not the sole, decision-maker of the respondents, at least on any important matters of policy and direction, and that Mrs Huang was very apprehensive, throughout the giving of her evidence, of saying anything whereof Mr Huang might conceivably disapprove. 81 Mrs Huang asserted moreover, in relation to the controversial change of the respondents' logo, that '… the styling of the Chinese characters were from the computer', and further that 'I only heard that those characters were produced by computers, as for more details I never asked' and further again that '… although we are husband and wife yet Mr Huang doesn't have to and does not tell me everything in such details'. Mrs Huang added in that context that '… he only told me his decision after he made a decision that he was going to or he had changed it'. She claimed that Mr Huang also said to her that '… such styling of Chinese characters could be produced by computers; it's very easy and convenient'. My perception of that evidence was that of mere repetition of an unconvincing theme which Mr Huang had probably impressed upon her in advance of her giving evidence. 82 When asked whether she understood that the change of the respondents' logo on 23 September 2000 would render its appearance 'very close' to the applicant's logo, Mrs Huang replied merely 'I don't think so', claiming in that context that she did not 'look very closely for the styles of another newspaper'; she asserted that readers of Chinese newspapers '… will pay attention to the names of the newspapers but not very much on the style of the characters', once again in my opinion a piece of mere advocacy of the theme advocated by Mr Huang in the course of his evidence. 83 Mrs Huang was unable to explain why it was that the first character of the respondents' font, appearing at the top left hand corner of the front page of the Oz Weekly edition of 14 December 2002 (being as earlier mentioned an insert in the weekend edition of the respondents' newspaper), happened to be the same as the first character of the respondents' former logo, moreover she was unable to say whether that particular masthead was produced by the same computers used to produce the masthead of the respondents' newspaper as from 23 September 2000. 84 Moreover when asked '[y]ou knew didn't you that Mr Huang changed the logo of the Chinese Herald in September so that it looked very similar to the logo of Australian Chinese Daily', she replied 'I didn't know and I didn't notice until we received letters from solicitors from the other side…'; she further purportedly explained that the reason for the change was because '… those Chinese characters can be or were or have been produced by computers and it is very easy and convenient and you don't have to ask somebody to write those calligraphy'; when it was put to her directly that the computer had nothing to do with the style of logo that was chosen, her response merely was '[t]hat was a decision made by Mr Huang'. 85 When further asked about the assembly of documents to be discovered by the respondents in the proceedings, Mrs Huang said that 'Roger [Huang] was responsible', and that she played no role at all in deciding what documents should be produced and further that '…normally things would be signed and decided by Roger and then whatever he asked me to sign I would sign… whatever I signed Roger would have to agree to it first'. That testimony, and what I have cited in the previous paragraph, provide further illustrations of the observations I have already made in relation to Mrs Huang's evidence. 86 I have taken the course of reproducing a great deal of the testimony of Mrs Huang largely in order to demonstrate, as I have already foreshadowed, that the executive decision-maker and executive policy maker of the respondents, upon virtually all matters material to and touching upon the controversial matters arising in or incidental to this litigation, was Mr Roger Huang, to the exclusion of Mrs Huang, and further that the credibility of her limited testimony in the proceedings cannot be divorced from my findings adversely upon the credibility and reliability of Mr Huang's testimony. I have therefore reached the clear conclusion that I cannot accept the accuracy or truthfulness of virtually anything said, orally or by affidavit, by either Mr or Mrs Huang, which is material to the issues in the proceedings which I am required to resolved. Expert evidence tendered by the respondents 87 The expert evidence adduced by the respondents was primarily from Dr Imogen Chen, a lecturer in the Department of Asian and International Studies at the Victorian University of Technology since 1994, her specialty being that of Chinese linguistics. She said that her particular area of specialised expertise was dialectology and that she had 'some training in Chinee calligraphy', but she did not make claim to any special expertise therein. Prior to being retained by the respondents to give evidence in the proceedings, she had been unfamiliar with the mastheads of the newspapers of the applicant and the respondents. 88 For the purpose of the first segment of her affidavit evidence, Dr Chen exhibited to her affidavit the following newspapers: (i) The Daily Chinese Herald published on 29-30 November 1997, which was shortly after the respondents' adoption of its former logo on 1 November 1997; (ii) The Daily Chinese Herald published on 22 November 2001, which was shortly after the respondents' adoption of its current logo on 23 September 2000; and (iii) The Australian Chinese Daily published on 7 June 2002, which was more than five years after the applicant's adoption of its current logo on 22 October 1996. 89 Dr Chen thereafter sought in her affidavit to distinguish the features of the respective mastheads of the parties, initially by the process of folding the above three newspaper editions into quarters, instead of the usual halves in which the same would normally be exhibited for sale (as in Exhibit R1). Addressing the appearance of those folded quarters, being those which displayed only the first two characters of the fonts of such respective three newspapers, Dr Chen furnished the following opinions: (i) purportedly as a person unfamiliar with those publications, she said she was unable to thereby identify the publisher of any one of the three newspapers; (ii) the first two characters of each of the three logos are pronounced 'Ao Zhou' in Mandarin, and 'O Chao' in Cantonese, both of which translate into English as 'Australia' in the countries of Taiwan, Hong Kong and most Chinese speaking regions outside mainland China; however in mainland China, the first two characters alone would not normally be used when referring to Australia; (iii) in order for Dr Chen to distinguish that folded applicant's newspaper from each of those folded newspapers of the respondents, it was necessary for her to open each paper out, and thus to reveal the last two characters of the masthead, so that the third character would be exposed. That third character translates into English, Dr Chen asserted, as 'Day' or 'Sun', and is pronounced 'Ri' in Mandarin and 'Yat' in Cantonese. Moreover the third and fourth characters in combination are pronounced in Mandarin 'Ri Bao', and in Cantonese 'Yat Pao', which translate into English as 'Daily Newspaper' or 'Day Newspaper'; (iv) the third character of the applicant's logo is pronounced 'Xin' in Mandarin and 'Sun' in Cantonese, both of which translate into English as 'New', and the third and fourth characters whereof are pronounced 'Xin Bao' in Mandarin, and 'Sun Pao' in Cantonese, and both whereof translate into English as 'New Newspaper', or possibly 'New Report'. It may be observed, on the basis of Dr Chen's thesis thus far summarised, that Exhibit A12 (attached of course to these reasons for judgment) most closely reflects the Cantonese rather than Mandarin translation of the applicant's current logo, and the respondents' current and former logos. 90 Since the main thrust of the applicant's case was placed upon the visual appearance of the competing newspapers on a news-stand or shop counter and moreover folded in half and not in quarters, the pronunciations of relevant Chinese characters put forward by Dr Chen were of limited relevance or value as evidence in the proceedings. 91 Dr Chen concluded that it was not possible, from observing only the first two characters of the fonts of each of the above three newspaper editions, to identify which was the applicant's current newspaper, and which were respectively the respondents' current and former newspapers, being a view which she gave as a person admittedly not familiar with any of the newspapers or their respective mastheads or how they were usually sold to members of the public. 92 Dr Chen then addressed in her affidavit at some length the affidavit evidence of Chris Ma sworn on 28 March 2001, which I have earlier summarised. She did not purport to address Professor Huang's affidavit evidence, saying that she had not been provided with a copy of his affidavit. She emphasised in any event that her training and expertise was that of a dialectologist and linguist, and conceded that she had no special expertise or training in the field of Chinese calligraphy. Her principal areas of disagreement with Chris Ma's affidavit of 28 March 2001 were comprehensive, the more prominent or significant contained in her affidavit being articulated as follows: (i) the similarity between the applicant's current logo and the respondents' current and former fonts were not close, and that it did not require any special training or education in calligraphy to discern the distinctions, an exercise which she said may be readily undertaken by a Chinese reader looking at the respective mastheads; moreover it was not part of the usual school curriculum to educate readers of Chinese characters as to the era in which the version of writing concerning each of those characters first evolved; (ii) a more restrictive impression, feeling or interpretation would apply to the use of Chinese characters in a logo or title, which could limit the variances that could apply to such titles; (iii) it was not correct to postulate that Chinese characters are uniform for all Chinese dialects, and most Chinese dialects have their specific range of Chinese characters for their dialect; a person not educated in Cantonese, and who was not familiar with the use of those characters, would not readily be able to read or understand the respondents' newspaper, and people educated in China would have difficulty in reading the same; (iv) the applicant's logo and the respondents' former logo were not 'quite similar'; the former was written in the Qing style created during the Qing dynasty 1636AD to 1911AD, whereas the latter was written in the Wei Bei style 220AD to 265AD (although she conceded to be 'not certain' in that latter regard); in any event, those two mastheads used two distinctly different styles of artwork; (v) it was not correct to state generally that the way a Chinese reader understands Chinese characters is very different to the way a person reading English would understand or appreciate English written words, in that although that may be the case where a Chinese reader first encounters the particular Chinese characters concerned, it may not be the case on the second or subsequent encounters of the Chinese reader with those Chinese characters; in any event, irrespective of the particular style used, the Chinese reader would rely on the third character of the respondents' logo to distinguish their former masthead from the applicant's masthead; (vi) the sounds made by reading aloud the applicant's logo and the respondents' former logo are 'quite distinct and different', contrary to Chris Ma's view; the impression created is similar to the surname of a particular individual, by which that individual is known; (vii) whilst the applicant's logo and the respondents' former logo are written in the Li Shu style, the applicant's logo represents the more modern version of that style which emerged in the Qing dynasty, whereas the respondents' version is 'a more ancient version'; moreover those different styles of writing would create a distinct feeling or impression in a reader's mind, and assist to distinguish the two mastheads; (viii) she agreed with Chris Ma that the differences in the applicant's font and the respondents' former font were 'striking', both at a casual glance and on more careful inspection, and moreover she proffered the view that the same was true as to the differences between the applicant's font and the respondents' current font; (ix) she also agreed with Chris Ma that the respondents' former logo and the respondents' present logo 'differ by reason of the change in font'; (x) however she disagreed with Chris Ma's opinion that by reason of the use of the same family of fonts, the similarity between the applicant's logo and the respondents' current logo is very similar; (xi) it does not require any special training or education in calligraphy to discern the distinctions in the fonts used in the applicant's present masthead and the respondents' previous and current mastheads; (xii) she agreed with Chris Ma's view that Chinese characters are to some extent pictorial representations of concepts, and that to a Chinese reader, the representation of a particular character is more significant than to an English character; she did not agree with Chris Ma's view that the space enclosing the respective logos was significant; (xiii) she disagreed with Chris Ma's opinion that a Chinese reader selects a newspaper based on the overall shape of the logo rather than by a careful reading of the logo; by way of elaboration, she added (as literally transcribed) the following: '…It is my impression of general readers in the Chinese community is that they are literate not illiterate, that generally speaking that they are well educated and purpose motivated in the manner in which and the sources from which they gain news and information. People from a Taiwanese origin tend to seek out news and information relevant to their origin and their communities. This also tends to be the attitude adopted by persons whose origins are from China and Hong Kong and the local communities within which they live and circulate. People of Cantonese origin tend to read Cantonese newspapers whereas people from Taiwan tend to read what are commonly known as Taiwanese newspapers. In this regard the various newspapers tend to focus on and provide information relating to matters concerning Hong Kong and China and matters concerning Taiwan. Chinese readers in this regard tend to be purpose motivated when selecting a particular newspaper which interests them and the use of a logo unless it addresses that particular interest would not in my opinion affect their selection of [a] particular newspaper.' 93 In the course of Dr Chen's cross-examination upon her lengthy affidavit above summarised, the following emerged: (i) she was not a calligrapher, professional or otherwise, and was not a specialist in the field of Chinese calligraphy; nor had she ever purchased the newspapers of the applicant and the respondents; (ii) she apparently knew of Professor Huang as a lecturer in calligraphy at the Griffith University in Queensland; in that regard, I should point out that Professor Huang's affidavit was made on 19 September 2002, whereas Dr Chen's affidavit was made earlier on 11 August 2002; she was not subsequently given a copy of Professor Huang's affidavit; (iii) she did not have any special training in calligraphy, but claimed that she knew how to do 'the research'; her close cross-examination upon the applicant's current font and the respondents' former and current fonts revealed confusion of thought and inadequacy of qualification to speak upon the artwork and versions of those three critical fonts; (iv) before making her affidavit, Dr Chen was provided with copies of Mr Roger Huang's affidavits sworn respectively on 9 January 2001 and 7 November 2001; whilst she claimed that she did not look at them until the preparation of her own affidavit was 'almost at an end', I am not persuaded from the undetached manner in which Dr Chen gave her evidence, and in particular her tendency on occasions to advocacy of the applicant's case, that the content of Mr Huang's affidavits did not influence the formation of Dr Chen's conclusions in favour of the respondents; (v) in any event, I would deduce from her answers under cross-examination that the visual comparisons which she made of the applicant's logo with the respondents' present and former logo took place on a 'side by side' basis, in order 'to see the differences and the similarities', and that it was on that basis that she asserted that 'I would believe that everyone can see they are entirely different'; (vi) it was possible for a regular reader of the applicant's newspaper to identify the differences between that newspaper and the respondents' newspaper, by 'just looking at the first two characters'; in any event, 'once they make a mistake they only make it once, they won't make it over and over again, if they have a particular newspaper in their mind, they will just pay special attention next time…'; she also asserted that '… its possible for some of the reader(s) to rely on the last character to pick up the newspaper, its possible because they look very different to me'; (vii) making a side by side comparison, 'in minute detail', between the current respective logos of the applicant and the respondents, the differences were said by Dr Chen to be as follows: 'The first character, No. 12, has a strange stroke on the left radical. We talk about this radical. The bottom part of the left component has three strokes and also the vertical line has as bending has a hook at the end which the other one, 14, it has only two strokes with a vertical line. That's one major difference and another one is the left component is entirely different. The left component for No. 12 is a square turn with a hook at the end but the other one is like a triangle on the top and then at the bottom its just two stokes like this. We call that one, it's a different radical from this part because this one, when send along it's a Chinese character Yo, means also. So the right component is entirely different when you look at the top, look at the bottom, they are made of different type of writing. When you look at the left component, the top part is a bit similar but the bottom part also distinguished from each other quite clearly.' (Her above reference to character No. 12 was to the applicant's current logo and her reference to character No. 14 was to the respondents' current logo, as Exhibit A12 discloses); (viii) her comparison between the applicant's current logo and the respondents' former logo, and a further comparison between the applicant's current logo and the respondents' current logo, revealed similarities 'slightly closer, not much greater' in the case of comparison of the latter to that of the former; (ix) she asserted that the applicant's current logo and the respondents' current logo created 'a different impression on the reader's mind', and not 'the same feeling'; (x) she accepted that in making comparisons between the respective logos of the applicant and the respondents, on a 'side by side' basis, and 'in minute detail', the reader was given less assistance by the style used in the respondents' current logo than was the case in relation to the respondents' former logo; however she was able to isolate differences in the position and spread of the three dots of the respective first two characters of the applicant's logo and of the respondents' current and former logos, and to describe the third characters of the respective logos as having 'entire' differences. 94 When it was suggested to Dr Chen at the close of her cross-examination that the styles of writing of the applicant's logo and of the respondents' current logos were each Li Shu, and that the respondents' former logo was Hsing Shu style, she re-affirmed her view that 'they are all written in Li Shu style but different – they are varying font of Li Shu style emerged in different Chinese dynast[ies]'. 95 The respondents adduced relatively short evidence from Mr Kevin Chen, who had been employed by the respondents as a graphic and layout designer for the preceding eight years. His affidavit was sworn on 7 November 2002. Mr Chen's duties included the design of the advertising layout, the typing and selecting of the font, the design of the page layout, the scanning of images, and generally all other work associated with the presentation of 'the copy'. He said that on or about July/August 2000, he was instructed personally by Mr Roger Huang at the respondents' Sydney office to select a sample of fonts from the respondents' computer programme, and to 'type in the four Chinese characters of our masthead, using those samples as fonts'. It will be recalled that at that time, the respondents' former logo was still in use, its present logo not being introduced until 1 November 1997. He said he further instructed by Mr Huang 'to select the fonts which most resemble the handwritten fonts', to which he said in reply '[t]here are a number of fonts that I will choose and set them out for you'. In the course of his cross-examination however, Mr Huang denied having any conversation in July or August 2000 with Mr Chen, being of course the months immediately preceding the respondents' introduction of their controversial font on 23 September 2000. 96 Mr Kevin Chen said that he then 'logged onto one of the computers and selected a number of fonts from the Founder WITS 3.0A pagemaking program', and thereafter 'typed the four Chinese characters forming the masthead of the Daily Chinese Herald about 30 times and selected a different font for each of the mastheads'. It will be recalled that in his third affidavit, Mr Huang denied any 'involvement whatsoever in the creation of the Li-er font style contained in the WITS 3.0A page making programme'. Thereafter Mr Chen recorded that he '…printed on film, via the image processing machine, the page containing all of the different font versions of the four characters making up the masthead of the [respondents' newspaper] about 30 times, and selected a different font for each of the mastheads… [and] then printed on film, via the image processing machine, the page containing all of the different font versions of the four characters making up the [respondents'] masthead'. He next said 'I took the film containing the different font versions of the [respondents'] masthead and photocopied it onto white paper, which I handed to Mr Huang'. Attached to his affidavit was a copy of the page 'as it was subsequently saved on the computer file'. That page contained 28 fonts, inclusive of that which was subsequently adopted by the respondents on 23 September 2000, and which appeared twice on the page, once in the same size as the other 27 fonts, and once in isolation in much larger size near the bottom of the page. 97 In his oral evidence in chief, Mr Chen said that the page attached to his affidavit '… is a copy of my demonstration which I did later on', and thus apparently not the demonstration made on the occasion of his original assignment, implicitly in my opinion because of the damage occasioned to the respondents' case by the content of Mr Chen's affidavit. Eloquent testimony to the reality of that damage is readily exemplified in Mr Huang's subsequent third affidavit which I have earlier extracted. Mr Chen's affidavit concluded as follows: '8. Either the same day or the following day Mr Huang approached me and said words to the effect: "I want you to use this font from now on for the masthead." Mr Roger Huang pointed at the Li-erstyle font version of the four Chinese characters forming the masthead of the [Daily Chinese Herald]. 9. I proceeded to print out the four Chinese characters forming the [Daily Chinese Herald] masthead in the Li-er font. 10. Since about September 2000 the [Daily Chinese Herald] has been using the Li-er style font that I prepared to represent the four Chinese characters forming its masthead.' 98 When cross-examined on behalf of the applicant, Mr Chen displayed a significant inability to recall any detail concerning his bringing into existence the page containing the 28 fonts attached to his affidavit, or the role of Mr Huang in any font selection process. He exhibited confusion as to the number of fonts the respondents actually purchased, and how many could be or were printed out, and in particular how many he ultimately printed out and showed to Mr Huang. Moreover he could no longer find in his computer the abovementioned page containing those 28 fonts which was attached to his affidavit, though he did not assert that he had deleted the same. Mr Chen denied that Mr Huang had instructed him that he wanted a font like that of the applicant. Mr Chen also claimed that Mr Huang said nothing to him when he handed to Mr Huang the document attached to his affidavit. He also denied that Mr Huang said anything to him about calligraphy. All that Mr Huang did in his presence, so Mr Chen stated, was to identify the style which he wanted. He also said, in answer to a question of mine, that '[a]t the time I really don't recall… exactly what style of fonts the Australian Chinese Daily (ie the applicant's newspaper) were using'. My conclusion is that I should place reliance upon Mr Chen's affidavit to the exclusion of his subsequent oral evidence, and to the exclusion of Mr Huang's third affidavit to the extent of its inconsistency with Mr Chen's affidavit. 99 I should add for completeness that Mr Huang denied having a conversation with Mr Chen in July or August 2000, or having ever seen the selection or samples of fonts the subject of Mr Chen's evidence. I find that denial to be at best unconvincing. It was described by senior counsel for the applicant to reflect part of an 'elaborate fabrication occurring in the respondents' camp'. Certainly Mr Chen's affidavit evidence cannot be relied upon by the respondents to provide any credible support for the 'no choice' theme advanced by Mr Huang as the reason for the respondents' change of logo on 23 September 2000; indeed Mr Chen's affidavit evidence provided a significant measure of support for the essence of the applicant's case. 100 The last of the affidavit evidence tendered by the respondents was that of Mr Lam, who was the information technology manager of the respondents from approximately December 2000 until May 2001. He was not cross-examined on his affidavit, which was confined in scope to the following matters: (i) he had been responsible for the computer software and hardware used in creating the masthead of the respondents' newspaper; (ii) the respondents' software program was an old pagemaking program with limited functionality; since the Chinese language does not have an alphabet, each Chinese character had to be individually created for display on the counter monitor or for any output; (iii) the Chinese language contains thousands of complex characters, and to display every single Chinese character would require 'an enormous amount of programming and memory'; (iv) the respondents' computer program contained 42 font styles but only 9 display font styles, which were used to display, on the monitor, all of the other 33 font styles as well; the display fonts were created to allow the computer operator to see the Chinese characters on the screen in a universal display font, but not necessarily in the font style selected; (v) it was from the use of a font style of the respondents' program font library known as Li-Er that the respondents' current masthead (ie that effective from 23 September 2000) was created. The font style was not a display font style, and the process of creating and outputting the logo of the respondents' current masthead was as explained below; (vi) the Chinese characters representing the masthead of the respondents' Daily Chinese Herald were typed on the computer housing the program, and were displayed in one of the nine display fonts; (vii) the Chinese characters were then selected and changed into the required Li-Er font, whilst still being displayed in one of the nine display fonts; (viii) the Chinese characters forming the current masthead were then saved in a file format recognised by the so-called Founder PSP Version 2.00, the purpose of which was to output pages created by the pagemaking programs, such as that used by the respondents; and (ix) the Chinese characters saved were then accessed by the respondents' programme, which was contained in another computer in the network; the Chinese characters in the Li-Er font were then to be previewed in Li-Er font style, and outputted in the Li-Er font style. Mr Lam was not cross-examined. Outline of the applicant's trade mark infringement claim 101 The applicant's trade mark propounded in the proceedings consists of the four Chinese characters or pictograms comprising the logo or font of its newspaper masthead. It has been so used since 22 October 1996. It was subsequently registered on 22 October 1998 and numbered 776305, and relates to goods in class 16 (being printed matter), and to services in class 35 (being advertising). A trade mark is defined by s 17 of the Trade Marks Act 1995 (Cth) as 'a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person'. Section 6 defines 'sign', non-exclusively, as including the following, or any combination of the following, namely, 'any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent'. There is no reason why any such letter, word, name, device, heading, shape etc cannot comprise a Chinese character or a font of Chinese characters, and no submission to the contrary was advanced on behalf of the respondents. I note that 'device' is defined by the Macquarie Dictionary (Revised Third Edition) to include an '… artistic figure or design… emblem, badge…'. 102 What conduct constitutes trade mark infringement is defined by s 120(1) of the Trade Marks Act, as follows: 'A person infringes a registered mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.' It follows that precise sameness, as distinct from substantial sameness, or deceptive similarity, is not required. The statutory expression 'deceptively similar' is described in s 10 of the Trade Marks Act as occurring in the following circumstances: 'For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.' 103 The applicant's case is that the respondents have infringed, and continue to infringe, the applicant's trade mark, by adopting as the logo for the masthead of the respondents' newspaper, from and after 23 September 2000, that lastly appearing at the bottom of the right hand column in the attached Exhibit A12, upon the basis that such logo is deceptively similar to the applicant's logo adopted for the masthead of the applicant's newspaper since 22 October 1996, and registered as a trade mark on 22 October 1998, being that logo appearing at the bottom of the left hand column of Exhibit A12. The applicant's case is that it is the distinctive combination of the characters used, and the eye-catching calligraphy in which they are depicted, that sustains the trade mark registration of its logo, and that a consideration of the respective logos of the parties serves to demonstrate the respondents' misappropriation of important features of that distinctive combination, such as to give rise to the alleged infringement. Outline of the applicant's copyright infringement claim 104 In addition to its trade mark infringement claim, the applicant pleaded that the respondents have infringed its copyright in the artistic work inherent in the applicant's logo, or font, which was created for, and later assigned to, the applicant by Professor Huang for the purpose of its newspaper's masthead. That asserted artistic work, as originally undertaken and completed, is encased in a glass frame comprising Exhibit A2 in the proceedings. As has already been recorded, that work was created in or about September 1996 by Professor Huang, then a university lecturer resident in Brisbane, with the use of a traditional Chinese brush pen applied to rice paper. I will refer to what appears in Exhibit A2, and to the applicant's reproduction thereof in the masthead of its newspaper, as the 'artistic work', in the context of my discussion of the case for breach of copyright. 105 Copyright in the artistic work was purportedly assigned by Professor Huang to the applicant by way of a certain letter dated 30 November 2000 addressed by him to the applicant's solicitors Chris Lai & Associates, and bearing his signature at the foot thereof (Exhibit A38). No objection was made to the tender of that letter into evidence, but objection was taken to the tender of the envelope in which the letter had been sent; as a consequence, the envelope was initially marked for identification. Subsequently the envelope was admitted into evidence as Exhibit A11. That envelope was addressed in handwriting to 'Australian Chinese Daily 1st Floor 357 Sussex St Sydney NSW 2000', and Chinese characters were additionally embossed in the same writing on the face of the envelope. It appears that the handwriting was that of Professor Huang. The text of the assignment purportedly effected by that letter, set out under the heading 'Logo of Australian Chinese Daily', and containing the signature of Professor Huang at the foot thereof, was as follows: 'I, Miao Zi Huang, confirm that the attached logo was created and drawn up by me and given to Australian Chinese Newspapers Pty Ltd trading as Australian Chinese Daily as a personal gift. The newspaper has the absolute and exclusive right of the use of the logo. Pursuant to section 196 of the Copyright Act 1968 I hereby formalise my absolute assignment of the right to use the said logo to Australian Chinese Newspapers Pty Ltd.' Of course as appears from Exhibit A12, the applicant had been using the artistic work as the logo for the masthead of its newspaper since 22 October 1996. Senior Counsel for the applicant acknowledged that the assignment did not take effect as an assignment of copyright prior to the date appearing on Exhibit A11, and moreover that the logo was not physically attached thereto at the time the document was signed. As to the latter concession however, it was rightly submitted by the applicant that it is abundantly clear from the evidence tendered in the proceedings what artwork was the subject of the assignment. The respondents sought initially to raise an issue as to the effectiveness of the assignment, based upon the circumstance that the letter was only furnished by Professor Huang after the respondents had commenced the use of their current logo the subject of the proceedings on 23 September 2000, but ultimately the respondents did not assign any relevant legal significance to that circumstance, and correctly so. 106 The applicant's case is that its logo comprises the reproduction of an artistic work, the same having been created by Professor Huang for the very purpose of creating something artistic for the applicant appearing in Chinese calligraphy. 107 As the artistic creator of the applicant's artistic work the subject of its logo, Professor Huang emphasised that during the course of his creation of the applicant's font, he first adjusted himself into 'a deep and long thinking process', and attempted to picture the appropriate masthead 'in [his] imagination'. His stated objective was to create a 'distinctive and eye-catching' logo, having 'an attractive force of appeal'. He said that it took him at least two weeks to settle his mind upon the design of the masthead. In common with other professional calligraphers, he produced the logo as an artistic work 'in one go', after a due 'thinking process'. None of that evidence was challenged. As indicated in the publication 'Chinese Calligraphy – An Introduction To Its Aesthetic and Technique' which I have already cited, there is a difference between the cultural significance and esteem of Chinese calligraphy and corresponding Western forms; Chinese calligraphy being a visual art, rather than a literal art, and having an important cultural and aesthetic role in Chinese life of ancient origin. Plainly that evidence demonstrated the characterisation of the applicant's logo as an artistic work inherent in the applicant's logo. 108 Section 10 of the Copyright Act 1968 (Cth) defines 'artistic work' inter alia as a 'painting', though 'painting' however is not defined. In Intellectual Property Creative and Marketing Rights by Patricia Loughlan (LBC 1998) at p 28, the learned author describes 'painting' as '… a roughly two-dimensional work of expressive form on a surface'. In Merchandising Corp of America Inc v Harpbond [1983] FSR 32, the Court of Appeal in England said that a painting is a work according to the ordinary usage of the English language, and further that it is a question of fact, in any particular case, whether a work is a painting or not. In my view, Exhibit A2 clearly satisfies the description of a painting, and in turn the statutory definition of an 'artistic work' (see [29-30]). The use of the Chinese brush pen on traditional Chinese rice paper by Professor Huang was sufficiently 'expressive' to bring into being a 'painting' for the purposes of copyright protection. It is also conceivable that Exhibit A2 constitutes a 'drawing' within the s 10 definition of an artistic work, however it is not necessary for me to express a final view on this matter. The reproduction of Exhibit A12 as a logo forming part of the masthead of the applicant's newspaper (which of course embodies Professor Huang's artistic expression as derived from Exhibit A2) maintained its description as an artistic work. The circumstance that the applicant's logo is coloured bright red, instead of the black colour in which Exhibit A2 appears, does not seem to me to produce any different consequence, nor was any such suggestion to that or similar effect raised by the respondents. 109 Moreover a work will be original enough for the subsistence of copyright, where the form thereof shows the application of some degree of knowledge, judgment, skill or labour by the author (Express Newspapers v News (UK) Ltd (1980) 18 IPR 201 at 207). As is readily apparent from the testimony I have extracted (at [30]), Professor Huang expended a great deal of knowledge, judgment, skill and labour in the production of the artistic work (Exhibit A2) which I have characterised as a 'painting'. Particularly in the light of Professor Huang's evidence, and even apart from the complementary evidence of Chris Ma and Alex Ma, I find such work to be original for the purposes of copyright protection. 110 In my opinion the applicant's claim of legal title to the artistic work, and with it its copyright character as an artistic work, as assignee thereof from Professor Huang, has been duly established. Sub-section 196(2) of the Copyright Act provides as follows: 'an assignment of copyright (whether total or partial) does not have effect unless it is in writing signed by or on behalf of the assignor.' No defence was advanced by the respondents upon the basis of any absence of valuable consideration for the assignment, nor was any suggestion advanced as to the need for the formality of a deed to evidence or effect the assignment. In my opinion, no such defences would have been available in any event. I observe in that latter regard that in London Printing and Publishing Alliance Ltd v Cox [1891] 3 Ch 291, title to a copyright was held to have been assigned by a letter. Moreover the subsection makes no stipulation as to any requirement for valuable consideration for an effective assignment, in the absence of a deed. Professor Huang demonstrated his intention to gift the copyright in the logo to the applicant, and his carrying that intention into effect, by the text of what was written by him on the face of the letter. Also I should add for completeness that the addressee of the letter of assignment, namely the applicant's solicitors, implicitly by their conduct accepted the purported assignment on behalf of and as authorised by the applicant, pursuant to the intention of Professor Huang readily apparent for instance from the content of the letter, and perhaps also from the face of the enclosing envelope. 111 That leaves the further copyright issue remaining for determination namely whether the respondents have copied a substantial part of the artistic work in the design of their current logo for the masthead of their newspaper, and in or by their subsequent use of their logo for that purpose (Copyright Act s 14(1)(a)) and thereby infringing the applicant's exclusive right to 'reproduce the work in a material form' (Copyright Act s 31(1)(a)(i)). The respondents contend to the contrary, for reasons not dissimilar to those which the respondents have advanced in support of their denial of the cause of action for breach of the applicant's trade mark. 112 The applicant's case for breach of copyright is that the respondents' managing director Mr Roger Huang (to be distinguished of course from Professor Huang), probably in collaboration with the respondents' employee Kevin Chen, copied the artistic characters of the applicant's logo by using the technological resources available to the respondents in order to imitate the artistic work of the applicant as closely as they could. The applicant readily accepted that the third character of the respondents' logo, at least viewed in isolation, is different to the third character of the applicant's logo, that difference being a product of necessity arising from the difference in the respective third Chinese translated words represented, as opposed to the manner and style in which the third characters are drawn. Thus, so the applicant's case continued in summary, the respondents copied Professor Huang's artistic work, but only to the extent that suited their purposes to do so. The applicant further contended that certain evidence given by Mr Huang, both at the interlocutory hearing before Whitlam J, and at the final hearing of the proceedings before me, to the effect that he had 'no choice' in the style of logo, was not merely false, but also 'quite dishonest'. I have earlier of course referred in some detail to that evidence. 113 The copyright issue therefore arising is whether the respondents have taken the applicant's work (Corelli v Gray (1913) 29 TLR 570) and if so, whether there is present the requisite degree of 'objective similarity' between 'a substantial part' (within s 14(1)(a) of the Copyright Act) of the artistic work the subject of the applicant's established copyright in the applicant's logo adopted for its newspaper's masthead as from 22 October 1996, and the respondents' logo adopted for their newspaper's masthead as from 23 September 2000. The applicant submitted that the necessary measure of objective similarity between the artistic work the subject of a substantial part of its logo used since 22 October 1996, and the logo used by the respondents as from 23 September 2000, has been established, and further that such similarity is attributable to copying, rather than for instance to the mere use or reflection of an unprotected idea or style. The resolution of the trade mark issues arising 114 One principle which I bear in mind, in the context of the trade mark issues arising (ie whether the respondents' mark is deceptively similar to the applicant's registered trade mark), is that for the purpose of determining the existence or otherwise of infringement, competing marks or badges of origin are not to be compared simply side by side. In the frequently cited words of Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil Ltd (1963) 109 CLR 407 at 415, an attempt must be made by the Court to ascertain the impression based on recollection of the applicant's registered trade mark that person's of ordinary intelligence and memory would have and on the other hand, the impression that such persons would get from the respondents' mark. 115 It is also appropriate to consider the effect of the spoken meaning of the mark in the Cantonese dialect of the Chinese language, notwithstanding that I should also bear in mind, in the light of the evidence for instance of the newsagents Messrs Yeo and Zhang, that Chinese newspapers are perhaps more often than not purchased by a customer picking up a copy thereof from an unsold pile on display on a retail counter for sale, as illustrated for instance by the photograph Exhibit R1, before making payment therefor, whether as an isolated purchase, or together with other commodities (ie confectionary) usually available for purchase in a newsagency. The usual manner in which ordinary people behave is normally the test for determining what confusion or deception may be expected, though exceptional carelessness or stupidity may usually be disregarded. The likelihood or otherwise of potential deception may hence vary having regard to the course of a particular business, and the way in which goods are sold or displayed for sale. Those general principles or observations may be drawn from frequently cited dicta in Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658 (Dixon J (as he then was) and McTiernan J) and at 664 (Evatt J). Moreover as the joint judgmentof Dixon and McTiernan JJ in Australian Woollen Mills also indicated (at 658), evidence of actual experiences of deception, if forthcoming, is of significant weight. Particularly in the normal course of retail sales of mass produced products, for relatively small prices, such as are here involved, it is not realistically to be expected that an applicant for relief will be able to identify, and in any event will feasibly incur the cost of seeking out and adducing evidence from, any large number of deceived buyers. 116 The applicant placed further reliance upon preceding dicta of Dixon and McTiernan JJ in Australian Woollen Mills (at 657), albeit provided in the context of causes of action for passing off, as well as for trade mark infringement, as follows: 'But the examination made of the respondent's motives and good faith seems to us to leave the question of infringement and passing off very much in the same position as it stood in without it. The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive. Moreover he can blame no one but himself, even if the conclusion be mistaken that his trade mark or the get-up of his goods will confuse and mislead the public.' 117 It is necessary that I keep in mind, in determining whether the respondents' trade mark logo introduced on and from 23 September 2000 is deceptively similar to that of the logo of the applicant introduced earlier on and from 22 October 1996, that I am not necessarily involved in an assessment of the totality of the conduct of the respondents, in the same way as in the context of passing off proceedings. The parties have nevertheless not been sparing in the amount of evidence each has adduced, doubtless because of apprehension as to where the appropriate line should ultimately be 'drawn in the sand' by the Court between the two causes of action. 118 It appears from the evidence which I have earlier summarised that for at least some years prior to 23 September 2000, and continuing up to the time of the hearing of the proceedings, the applicant has been the market leader in the publication and distribution of Chinese language newspapers in Australia. That market leadership would doubtless have secured significantly larger income from sales to members of the public, and thereby the potential for larger advertising revenues, than that achieved by each of its competitors individually, including the respondents. Those circumstances may well have provided the respondents with the reason or motive for changing their logo on 23 September 2000 to the extent that they did. 119 Following upon the respondents' commencement of use of their current logo on 23 September 2000, each of the two newsagents Messrs Yeo and Zhang, whose evidence has already been recounted, experienced sales to a not insignificant extent of the respondents' newspaper, notwithstanding customer assertions of their intention to have purchased only the applicant's newspaper. Consistently with authority already cited, that customer experience, which I accept to have been credibly and accurately described and detailed by those two witnesses, has provided evidence, albeit of course not conclusive, of an inference open to be drawn to the effect of the implementation of a course of action on the part of the respondents to lead customers or patrons of the applicant newspaper into thinking that the respondents' logo was in fact that of the applicant. That course of action pleaded by the applicant was of course the change of the respondents' logo of the masthead of their newspaper the Daily Chinese Herald on 23 September 2000 to their current logo. 120 The applicant has established in my opinion a sound basis for its case that the respondents' current logo (which by reason of its font, colour and position on the first page of the newspaper was a badge of origin used to indicate a trade connection between the 'Daily Chinese Herald' and the respondents – Top Heavy Pty Ltd v Killin (1996) 34 IPR 282), adopted on 23 September 2000, is deceptively similar to the applicant's current logo adopted earlier on 22 August 1996, within s 120(1) of the Trade Marks Act, for the following reasons to be read cumulatively, and without any particular sequence of emphasis: (i) both are of similar size and use the same red colour; (ii) the only distinctive or distinguishing character of the respective logos is visually the third one; moreover the other three characters translate identically into Chinese as 'O Chau… Pao'; (iii) both logos owe their origins and historical development to the Li Shu style of font; although there are numerous styles of Li Shu, the style adopted for the respondents' current logo has been matched as closely as possible to Professor Huang's Li Shu style, even taking into account the different third character of the respective logos of the parties; (iv) Professor Huang's Li Shu style 'combines the Li Shu in Qing Dynasty', and the respondents' Li Shu style is 'influenced by Li Shu style in Qing Dynasty'; a synonym for 'style' in that context is 'typeface'; previously the respondents' logo was written in the Xing-Shu style; (v) a Chinese buyer tends to look at the impact of the image of the four characters, or their whole layout, such that they come together as one image or visual experience; thus the overall characters of the two logos look similar, especially when viewed 'scantily'; (vi) the 'dots' appearing in the respondents' logo, though not the same as those of the applicant's logo, have the overall appearance of being in the same style, and it is the overall appearance which is looked at, rather than individual components; or as put another way, the Chinese reader 'look[s] at the whole thing as one piece of graphic' and not 'word by word'; particularly is that so, when the Chinese viewer is engaged in making a fleeting glance at the masthead of a newspaper in the course of purchasing the same; (vii) most of the five strokes of both current mastheads are the same; and (viii) the goods or services in respect of which the applicant's trade mark is registered (ie printed matter being goods in class 16 and advertising being services in class 35) is the same as the respondents. 121 Those reasons (pars (i)-(vii)) represent in summary a combination of the opinions given by Chris Ma, Professor Huang and Alex Ma; their opinions were not expressed identically, but in my opinion were expressed consistently, or essentially so. My summary does not place any major emphasis on the issues as to Li Shu style and its various visual characterisations referrable to Dynastic periods of time. Particularly is that so here, because the actual deception of Chinese newspaper readers established by the newsagents' evidence in the proceedings appears to have occurred in the limited context of likely hurried or inattentive buying of the respondents' newspaper in mistake for the applicant's newspaper. 122 I have further concluded that the expert testimonies of Chris Ma, Professor Huang and Alex Ma were clearly to be preferred to that of Dr Chen, to the extent of inconsistencies, and also to that of Mr Huang, including in particular what he set out in detail in his second affidavit, which I have earlier extracted in the same detail. As Dr Chen readily conceded, her training was that of a dialectologist and linguist, and she had no special training in the field of Chinese calligraphy. In any event, an important limitation upon the thesis and impact of her evidence was her pre-occupation or dominant focus upon the minute detail involved in 'side by side' comparisons of the respective logos of the parties. I thought that her testimony, particularly under cross-examination, disclosed at times confusion of thought, and an undue tendency to advocacy of the respondents' case. 123 I find moreover that the evidence discloses the existence, at all material times, of a purpose adopted by the respondents to deceive and confuse buyers and prospective buyers of the applicant's newspaper with a view to attracting their patronage, as a consequence of an initial mistaken or unintended purchase at the counter. That objective was in my opinion pursued by Mr Roger Huang from about the time of his instructions given to Mr Kevin Chen, in about July or August 1996, to produce a new graphic design or layout for the respondents' font. As appears from the evidence of Messrs Yeo and Zhang, that purpose was to an extent achieved, at least in the short term. 124 I am uncertain whether Kevin Chen's account of his initial instructions and investigations, as recorded in his affidavit, was essentially accurate. That uncertainty is caused by Mr Chen's responses under cross-examination, which I have earlier summarised, and in particular the content of Mr Huang's extraordinary third affidavit whereby Mr Huang eschewed at least indirectly parts of Mr Chen's affidavit evidence. Mr Huang's initial enigmatic thesis of 'no choice', or as he later propounded instead, a limited choice of four fonts, followed subsequently in his evidence of a choice of 12 to 14 fonts, added to the lack of credibility of his account of the reasons for adopting the current logo of the respondents. 125 As has been already demonstrated from my account of his cross-examination, the earlier unspecific claims of Mr Huang to the effect that he had met with Professor Huang virtually evaporated in confusion and contradiction. Moreover his alleged absence of consultation with his wife on the change of logo, notwithstanding her office as co-director and general manager of the respondents, coupled with his reasons for the absence of any business records relating to the respondents' proposal for change of the font, was hardly credible. To those unsatisfactory factors may be added the continuing use of the first character of the respondents' former logo in certain of its publications (for instance in Oz Weekly), without any satisfactory explanation. Moreover Mr Huang's protestations of an absence of competition between the respondents' and applicant's identically priced daily newspaper, on account of what may be described as the Taiwan factor, was unsupported by the evidence given in the course in his own cross-examination, when he was taken through the respondents' edition published on the same day of that cross-examination. 126 I would conclude that the respondents, under and pursuant to the direction and supervision of Mr Roger Huang as the controlling mind of the respondents, set about the adoption of a new logo of Chinese characters for the masthead of the respondents' newspaper, being a course of action finalised and implemented on 23 September 2000, being a logo which constituted a trade mark at least deceptively similar to the applicant's Registered Trade Mark No. 776305. 127 There remains therefore for determination whether the conduct of the respondents also constituted breach of the applicant's copyright in the logo or font of the masthead for its newspaper. I have already found the same to constitute an artistic work. Given my finding also that the respondents' logo constituted a trade mark at least deceptively similar to the applicant's trade mark, it becomes conceptually difficult in the circumstances of the case for me to avoid the further conclusion that the respondents infringed the applicant's copyright in that artistic work, by reason of an exercise in qualitative comparisons. The respondents did much more, for instance, than reproduce their Chinese name, existing since 1 November 1997, in Li-Shu style, and as the applicant has rightly submitted, it was no mere accident that the respondents utilise that style. 128 Given the nature and extent of my findings in relation to the breach of trade mark issues, the conclusion that the respondents have additionally copied a substantial part of the subject matter of the applicant's copyright in that artistic work, comprising the present logo of its masthead, within the purview of s 14(1)(a) of the Copyright Act, is I think virtually inevitable. Incidentally, the applicant does not assert copyright in the Chinese translation of its logo, namely O Chau Sun Pao. Copyright is claimed only in the distinctive form and style in which those words were visually painted and expressed through the calligraphy of Professor Huang. 129 Senior Counsel for the applicant submitted that the 'substantial part' provisions of s 14(1)(a) of the Copyright Act were to be applied to the circumstances of this case in the light of the following dictum of Gibb CJ (one of the majority of the High Court) in S.W. Hart & Co Pty Ltd v Edwards Hot Water Systems (1984-1985) 159 CLR 466 at 467, as follows: 'The notion of reproduction, for the purposes of copyright law, involves two elements – resemblance to, and actual use of, the copyright work, or, to adopt the words which appear in the judgment of Willmer LJ in Frances Day & Hunter Ltd v Bron… "a sufficient degree of objective similarity between the two works" and "some causal connection between the plaintiffs' and the defendants' work". Lord Reid said in Ladbroke (Football) Ltd v William Hall… "Broadly, reproduction means copying, and does not include cases where an author or compiler produces a substantially similar result by independent work without copying. And, if he does copy, the question whether he has copied a substantial part depends much more on the quality than on the quantity of what he has taken". …In the same case, Lord Evershed said, "that what amounts in any case to substantial reproduction… cannot be defined in precise terms but must be a matter of fact and degree".' 130 I was also referred by Senior Counsel for the applicant to Dixon Investments Pty Ltd v Hall (1990) 18 IPR 490 at 495 (Lockhart, Spender and Ryan JJ), where in the context of citation of many authorities, the following dicta appears: 'It is always a question of judgment in each case whether the parts taken from the work in which copyright subsists represent the taking of a substantial part of the work…. The question of what is a substantial part of a work may involve fine questions of degree… There will be infringement if the defendant's work bears a similarity to a substantial part of the plaintiff's work or even differs markedly in other ways. It is not necessary that there be a substantial similarity overall between the two works…' 131 More recently in Designer Guild Ltd v Russell Williams (Textiles Ltd) [2000] 1 WLR 2416, Lord Hoffman observed at 2422: 'And there are numerous authorities which show that the "part" which is regarded as substantial can be a feature or combination of features of the work, abstracted from it rather than forming a discrete part.' And at 2425, Lord Millet said as follows: 'If the plaintiff demonstrates sufficient similarity, not in the works as a whole but in the features which he alleges have been copies, the burden passes to the defendant to satisfy the judge that, despite the similarities, they did not result from copying.' 132 The authoritative tests as to the taking or reproducing of a substantial part of the copyright have been established to my satisfaction. The inference open to be drawn is that whatever occurred as a result of the utilisation of a computer typesetting programme put in place by the respondents, the respondents manipulated a substantial part of the artistic work the subject of the applicant's logo, along with other fonts which they had purchased, in order to produce the respondents' most recent logo. That substantial part so taken comprised in particular the essence of the first two and fourth characters of the applicant's logo, taken as a visual impression of a totality of that logo, and for what it may matter, taken also by reference to the aggregate of the elements or features of the applicant's logo. There is therefore in my opinion the requisite objective similarity. There is in my opinion a measure of objective similarity between the respondents' most recent logo and the applicant's artistic work, which has been rightly attributable by the applicant to copying, rather than to the mere use or reflection by the respondents of an unprotected idea or style. 133 The applicant's case for breach of copyright is therefore established, in addition to that for breach of trade mark. The applicant is therefore entitled to appropriate injunctive relief, and to an enquiry into damages allegedly sustained. I propose however that my orders not take effect for thirty days, so as to allow time to the respondents to substitute a new logo, without being obliged to shut down the daily operations of the Daily Chinese Herald. I propose also to grant liberty to apply generally in relation to the relief I have granted. I certify that the preceding one hundred and thirty-three (133) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Conti. Associate: Dated: 22 August 2003 Counsel for the Applicant: J Nicholas SC, M Green Solicitor for the Applicant: Chris Lai & Associates Counsel for the Respondent: R Freeman Solicitor for the Respondent: Kalantzis, Lawyers Date of Hearing: 9, 10, 11, 12, 13, 16, 17 and 18 December 2002 and 7-8 April 2003 Date of Judgment: 22 August 2003 Exhibit A1 Exhibit A3 Exhibit A5 Exhibit A6 Exhibit A12 Exhibit A19 Exhibit A22