ACP Magazines Pty Limited v Southdown Publications Pty Limited & Ors [2002] NSWSC 715

Reported Decision : (2003) 56 IPR 504

New South Wales Supreme Court

CITATION : ACP Magazines Pty Limited v Southdown Publications Pty Limited & Ors [2002] NSWSC 715 FILE NUMBER(S) : SC 50130/02 HEARING DATE(S) : 31/7/02 JUDGMENT DATE : 1 August 2002

ACP Magazines Pty Limited (plaintiff and respondent on the motion) Southdown Publications Pty Limited (first defendant) PARTIES : Pacific Publications Pty Limited (second defendant and applicant on the motion) PMP Publishing Pty Limited (third defendant) Jupelly Pty Limited (fourth defendant) JUDGMENT OF : Einstein J

Mr J Ireland QC, Mr R Cobden (plaintiff and respondent on the motion) Mr SG Finch SC, CA Moore (first, second and fourth defendant and applicant on the motion) COUNSEL : No appearance PMP Publishing Pty Ltd (third defendant)

No appearance PMP Publishing SOLICITORS : Gilbert & Tobin (plaintiff and respondent on the motion) Coudert Brothers (first, second and fourth defendant and applicant on the motion) CATCHWORDS : Practice and Procedure - Interlocutory injunctions - Principles - Status quo - Contract - Construction - Intellectual property - Trade marks - Business names Business Names Act, 1962 (NSW) Supreme Court Act 1970 LEGISLATION CITED : Trade Marks Act 1955 (Cth) Trade Marks Act 1953 (New Zealand) Trade Marks Act 1995 (Cth) Trade Practices Act 1974 (Cth) American Cyanamid Co v Ethicon Ltd [1975] AC 396 Appleton Papers Inc v Tomasetti Paper Pty Limited [1983] 3 NSWLR 208 Beecham Group Limited v Bristol Laboratories Pty Ltd (1968) 118 CLR 618 Eng Mee Yong v Letchumanan [1980] AC 331 CASES CITED : Magna Alloys & Research Pty Ltd v Coffey [1981] VR 23 Mark Foy's Limited v Davies Coop & Co Limited (1956) 95 CLR 190 Plimpton v Spiller (1876) 4 Ch D 286 Shercliff v Engadine Acceptance Corporation Pty Ltd [1978] 1 NSWLR 729 Stollznow v Calvert [1980] 2 NSWLR 749 DECISION : Orders: That ACP Magazines Pty Limited and ACP Publishing Pty Limited be restrained pending the determination of the proceedings or further order by themselves, their servants or agents or otherwise from (a) advertising, distributing, offering for sale or selling any magazine containing any statement that it is "the Home of the Logies" with or without the device which is the subject of registered Trade Mark numbers 520303 and 520304; (b) using any of the Trade Marks or any mark which is substantially identical with or deceptively similar to the Trade Mark as a trade mark within the meaning of section 7 (4) and 7 (5) of the Trade Marks Act 1995 in relation to the classes of goods and services in respect of which any of the Trade Marks is registered. That the cross-defendants be restrained pending the determination of the proceedings or further order by themselves their servants or agents or otherwise from: (a) advertising, distributing, offering for sale or selling any magazine containing any statement that it is "the Home of the Logies" with or without the device which is the subject of registered Trade Mark numbers 520303 and 520304; (b) using any of the Trade Marks or any mark which is substantially identical with or deceptively similar to the Trade Mark as a trade mark within the meaning of section 7 (4) and 7 (5) of the Trade Marks Act 1995 in relation to the classes of goods and services in respect of which any of the Trade Marks is registered.