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. IN THE SUPREME COURT OF NEW SOUTH WALES EQUITY DIVISION COMMERCIAL LIST EINSTEIN J Thursday 1 August 2002 ex tempore Revised Wednesday 14 August 2002 50130/02 ACP MAGAZINES PTY LIMITED v SOUTHERN PUBLICATIONS PTY LIMITED & ORS JUDGMENT - On application by the Second Defendant, Pacific Publications Pty Limited, for injunctive relief The Proceedings 1 There is before the Court an interlocutory application brought by the second defendant, Pacific Publications Pty Limited [" Pacific Publications" or "Pacific Publications 896 "] for injunctive relief, inter alia restraining the plaintiff, ACP Magazines Pty Limited [" ACP Magazines "] its servants and agents from: advertising, distributing, offering for sale or selling any magazine containing any statement that it is the " Home of the Logies "; from using or threatening to use certain trademarks for the word the Logie and a Logie statuette device [respectively trademarks numbers 520303 and 520305] or any marks substantially identical with or deceptively similar to these trade marks in relation to the promotion, advertising, manufacture, distribution, offering for sale or sale of printed publications other than with the consent of Pacific Publication. 2 It will be necessary to traverse a deal of the history of the dealings between the parties and their predecessors in order to make clear how the current dispute arises. One thing is, however, very clear and that is that both parties see a particular value of high order in such intellectual rights as may inhere in and permit the promotional use of the words " Home of the Logies " and in the subject trade marks. The plaintiff has adduced evidence to the effect that many existing TV Week magazine readers would be well acquainted with the long standing association between TV Week and the TV Week Logies which association is said to have been reinforced by the weekly appearance on page 3 of the TV Week home of the Logies device. This evidence is to the effect that for what has been called " the TV Week Home of the Logies device " to be removed from page 3 would break the continuity of this association that the plaintiff has sought to maintain upon its acquisition on 24 July 2002 of rights to publish the TV Week magazine and acted upon in its publishing last week of its first post acquisition edition of the magazine. The evidence is that it would be almost impossible to quantify in money terms the effect of the loyalty of those buyers and readers should the Court ultimately decide that the plaintiff was always entitled to include the TV Week Home of the Logies device in the magazine. This evidence was given by Mr David Gardiner, Chief Operating Officer and Chief Financial Officer of Australian Consolidated Press Limited and Chairman of ACP Magazines. 3 These proceedings were commenced on 25 July 2002 and relate to the proper construction of a Deed dated 6 August 1980 entered into between Australia and Consolidated Press Limited [therein called ACP], News Limited [therein called News] and Southdown Publications Pty Limited [therein called Southdown]. [The 1980 deed]. 4 The issues for final hearing will determine the construction issue and nothing which is said in this interlocutory Judgment is to be regarded as a final adjudication of that construction issue. The 1980 deed 5 A copy of the 1980 deed is appended to this Judgment. At that time ACP was apparently entitled to all of the goodwill, trademarks, business names and other rights [therein and hereafter called " the ACP Rights "] which permitted it to publish and were sufficient for the publication of the magazines called TV Times and TV Guide. 6 The deed recited that News and/or Southdown were entitled to all of the goodwill, trademarks, business names and other rights [therein hereafter called " the News Rights "] which permitted the publishing and were sufficient for the publication of the magazine called TV Week. 7 The recitals provided that ACP had agreed to sell the ACP Rights to News on the terms provided for in the deed. 8 Clause 1.1 provided that ACP was to sell to News and News was to acquire the ACP Rights which would vest in News on the execution of the deed. The clause provided that the ACP Right[s] and the News Rights would thereupon be merged in a business referred to in clause 2 of the deed and defined as "the Business". 9 Clause 2.1 provided that subject to the deed, News or Southdown would continue to publish, produce and distribute the magazine then called TV Week or would arrange for that to be done but under the title " TV Week incorporating TV Times and TV Guide ". That title was thereafter referred to in the deed as " the new title " and that magazine, under the new title, was thereafter referred to in the deed as " the magazine ". Savoy Clause 10 Clause 7.1 included what was referred to as the Savoy Clause. This provided as follows: 7. Savoy Clause 7.1 Either News or ACP (hereinafter called "the offeror party") may at any time after the date six months from the date of this Deed offer in writing to sell or procure the sale to the other party (hereinafter called "the offeree party") the offeror party's interest under this Deed for the sum of money specified by the offeror party in the said offer. If the offeree party shall not have accepted the offer by giving notice in writing within fourteen (14) days after the making of the offer the offeror party shall thereupon be deemed to have notified the offeree party that the offeror party will purchase from the offeree party all of the offeree party's interest under this Deed for the sum specified in the offeror party's original offer and the offeree party shall in that case be bound to sell to the offeror party. Completion of any sale or purchase pursuant to this Clause 7 shall take place within twenty-one (21) days after acceptance of the offer by the offeree party or the deemed notice by the offeror party as the case may be, and this Deed shall subject to Clause 7.3 cease to operate. 7.2 In this Clause 7 any reference to the interest of any party under this Deed shall mean in the case of ACP the right to receive the share of the net profits of the Business as provided in Clause 3.1 and shall mean in the case of News the right title and interest of News in and to the Rights including (but without limiting the generality of the foregoing) in respect of the new title and of each of the separate titles "TV Week", "TV Times" and "TV Guide" and of the goodwill attached to any or all of those titles. 7.3 If pursuant to an exercise of the Savoy Clause the purchaser is ACP and ACP shall continue publication of the magazine then for a period of one (1) year from completion (or such lesser period as publication continues) Downlands or News or a related corporation of News (as News may nominate prior to completion and from time to time) shall be engaged by ACP to print and bind the magazine for a price that is no more than that which would otherwise be generally available to ACP from other printers for the printing and binding of a similar magazine in similar quantities. Corporate Restructures/Name Changes/Novations 11 It is common ground that a number of corporate, group and company name changes have taken place between the execution of the 1980 deed and the present time. Rights and obligations have been novated. A new instrument of ratification was entered into as recently as March 2002. 12 The changes of name, organisation and corporate changes and the like may generally be understood by reference to the following portion of the statement entitled " Undisputed Facts " but in fact being a statement prepared by the defendants' solicitors: "Organisation and conduct of the Logies · For a period commencing from at the latest 1992 and ending in September 2001 the organisation and conduct of the Logies was carried out by a company now known as PMP Publishing Pty Limited [" PMP Publishing "]. · Since September 2001 the organisation and conduct of the Logies has been carried out by Pacific Publications Pty Limited [" Pacific Publications "]. Trademarks · On 2 October 1989 Nationwide News Pty Limited [" Nationwide News "] applied for and in due course obtained registration of the trade marks in the classes and in respect of the goods and services set out in annexure A to the statement of facts [" the Logies Marks "] under the Trademarks Act 1955 (Cth). These are: (1) trade mark number 520303 in class 16 described in the specification as " paper, cardboard, articles of paper or of cardboard (not included in other classes); printed publications, magazines, newspapers, periodicals and other printed matter; and all other goods in this class ". (2) trade mark number 520304 in class 41, described in the specification as " entertainment services ". [Both of those trademarks are in graphic form] (3) trade mark number 520305 in class 16 to the word "Logie" described in the specification as " printed publications, magazines, newspapers, periodicals and other printed matter ". (4) trademark number 520306 in class 41 to the word " Logie " described in the Specification as " television entertainment services and entertainment services associated with the presentation of television awards ." · On or about 27 March 1992 Nationwide News assigned to PMP Publishing the Logies marks numbered 520303 and 520304, and on or about 1 July 1992 similarly so assigned the Logies mark numbered 520305 and on or about 20 May 1993 similarly so assigned the Logies mark numbered 520306. · On or about 28 September 2001 the Logies marks were assigned by PMP Publishing to Pacific Publications. · Pacific Publications is currently the registered proprietor of the Logies marks. · On 6 August 1980 News Limited [" News "], Fox News Pty Limited [" Fox News "] and Australian Consolidated Press Limited [" ACP" ] entered into the 1980 Deed. Fox News was then called Southdown Publications Pty Limited and is now deregistered. The Deed of Novation In February 1992 by Deeds of Novation, the plaintiff in these proceedings acquired the rights and assumed the obligations of ACP, and the first defendant, Southdown 266 acquired the rights and assumed the obligations of News and of Southdown Publications [which had become known as Southdown 123] under the 1980 Deed, with effect from 22 October 1991" 13 In the result it is common ground that pursuant to assignments and novations, ACP Magazines succeeded to the rights of Australian Consolidated Press Limited and Southdown Publications Pty Limited succeeded to the rights of News Limited and the original Southdown Publications Pty Limited. 14 On 14 March 2002 Southdown 266, Pacific Publications which is the second defendant, Jupelly Pty Limited and others, entered into a Settlement Deed [ "the settlement deed" ] pursuant to clause 4.1 of which, Southdown 266 ratified and confirmed the 1980 deed, agreed that at that date the 1980 deed was between it and the plaintiff and agreed that at that date the 1980 deed remained fully effective. Also by clause 4.9 of the settlement deed, each of Pacific Publications 896 and Jupelly agreed to do all things necessary and to provide all assistance required to ensure that Southdown 266 complied with its obligations under the 1980 deed. 15 Apparently Jupelly is the beneficial owner of all shares in Southdown 266 and Pacific Publications 896. Apparently the third defendant PMP Publishing Pty Limited ["Pacific 878"] at least so the plaintiff pleads, from 1991 conducted some or all of the merged business already mentioned, being the business which continued whereunder News or Southdown 123 continued to publish, edit, produce and distribute the magazine TV Week under the new title, already referred to. The issue which has brought the parties to Court 16 On 19 June 2002 the plaintiff, by letter to Southdown 266, offered pursuant to clause 7.1 of the 1980 deed to sell to Southdown 266, the plaintiff's interest under the 1980 deed for 60 million dollars. This was an exercise of the Savoy Clause. As Southdown 266 did not by notice in writing accept this offer within 14 days of the making of the offer, the deed operated so as to deem the plaintiff to have notified Southdown 266 that the plaintiff would purchase from it all of Southdown 266's interest under the deed ["the Interest"] for the sum of 60 million dollars and Southdown 266 became accordingly bound to sell the Interest to the plaintiff. 17 The vital legal issue and together with the important balance of convenience issue dealt with hereunder, the only legal issue now before the Court, concerns the ambit of the 'Interest' which Southdown 266 became bound to sell and to convey to the plaintiff following the taking of the above steps. That issue concerns whether or not the " Interest " included rights associated with the annual television awards ceremony which in honour of John Logie Baird, said to have been the pioneer of television, is known as the " Logies " or the " TV Week Logies ". 18 There is apparently no issue, at least for the purposes of the application for interlocutory relief with which the Court is presently dealing, but that " the Logies " is the name of a series of awards made to persons working within the television industry in Australia. The Logie awards are presented at a ceremony held in or about April each year. The ceremony is generally a gala evening and is currently broadcast by channel 9. There are various categories of award including " Most Popular Personality on TV ", " Most Outstanding Actor " and " Most Outstanding Drama Series ". The recipients of awards are determined by either a panel of expert judges or by audience polls and each receive a statuette in the distinctive Logie shape. 19 The short position is that the plaintiff contends but the defendants deny that a number of registered trademarks " Logie ", the statuette trademark as well as all common law trademarks associated with TV Week magazine and the Logie awards (which the plaintiff asserts have been conducted by and in association with TV Week magazine since their inception) are all part of the interest of Southdown referred to in Clause 7 of the 1980 Deed to which the plaintiff is entitled pursuant to its exercise of the Savoy Clause. The Events of July this Year 20 This dispute has been the subject of detailed correspondence passing between the plaintiff and relevant defendants from early July 2002. The correspondence in short included: · Southdown on 5 July making clear that, having learned that ACP regards the Logie trademarks and rights as included in the relevant Interest and required to be transferred to it, Southdown did not hold this view but proposed as follows: "We understand that you agree with us that this is an important issue which needs to be dealt with in a sensible and expeditious manner and without adverse impact to the magazine TV Week or to its loyal readership. We therefore propose that we carve out the dispute about the Logies and co-operatively seek a declaration from the Court as to whether the Logies are covered by the deed or not. In the meantime we suggest that we both proceed to completion on 24 July: Southdown would transfer to ACP Magazines, Southdown's interest under the deed being the TV Week goodwill, trademarks and business names and ACP would pay Southdown the purchase price of 60 million dollars. If the Court holds that the Logie trademarks form part of Southdown's interest under the deed, Southdown would then transfer them. If the Court held that the Logie trademarks do not form part of Southdown's interest under the deed, we would be under no obligation to transfer them to ACP." · Southdown on 10 July advising the plaintiff of its concern in relation to certain press reports showing that the plaintiff was claiming in public an entitlement to some form of rights relating to the Logie awards. Southdown sought particulars of precisely what the plaintiff's claimed in this regard and to follow in detail the steps which the plaintiff asserted that Southdown was required to take to facilitate the purchase. Southdown confirmed quite clearly that it would comply in full with its contractual obligations to the plaintiff under the 1980 Deed and would transfer to ACP anything to which ACP was entitled under that deed. Southdown confirmed that it remained ready, willing and able to complete the TV Week sale by 24 July 2002. · By mid July, Southdown had still not received a response to its letters. As completion of the transaction was scheduled to occur in less than two weeks, it again wrote to the plaintiff referring particularly to the practical steps which needed to be agreed to. Even at this stage there had been no formal communication from the plaintiff in relation to its claims made in the press that some rights in relation to the Logies were part of the transaction. By now Southdown was making clear to the plaintiff that it assumed, as the plaintiff had not formally communicated in relation to the matter with Southdown, that the plaintiff did not then assert that rights in relation to the Logies were part of the transaction. Southdown made the legitimate point that it could not be expected to make decisions on the basis of rumour and speculation in the press. · Ultimately on 16 July 2002 the plaintiff wrote formally to Southdown making clear its stance as being that the particular registered and common law trademarks relating to the Logie awards were part of the interest to which it had become entitled under the 1980 Deed. It advised that it would " take appropriate action to protect its rights in respect of those rights prior to and following completion of the purchase. " · By letter of 18 July, now 6 days before completion, Southdown advised the plaintiff that it proposed to offer to the plaintiff on completion, a number of particular deeds and documents. It advised that it expected the plaintiff to pay 60 million dollars in exchange for the assignments and transfers which it had outlined as proposed. It also stated that it intended to commence proceedings on an expedited basis for a court declaration as to whether the Logie rights formed part of Southdown's interest as defined in clause 7.2 of the deed. It made clear that it would comply with the terms of any court order made and would comply fully with its obligations under the deed as interpreted by the Court. It stated: " In any event, if the Logie rights (or any other contested rights) are found to form part of Southdown's interest under the deed, then they will in fact have been transferred to [the plaintiff] by virtue of the deed [which was proposed]." · Importantly this letter asserted that "none of the Logie related rights are presently crucial given that the next Logie ceremony is not scheduled to take place until April 2003. We expect that if you are prepared to cooperate with us in determining this issue the matter should be resolved expeditiously and significantly before the next Logie ceremony. We think that this is in the interests of all parties and of the Logies event. We would be prepared to agree not to use the TV Week Logies and TV Week home of the Logies name." The letter further treated with whether or not the plaintiff would be paying the 60 million dollars on the proposed completion date because it might become necessary, if that payment and completion did not take place, for Southdown to continue to publish TV Week so as to preserve its value and so as to ensure that the readers continued to be able to buy the magazine and that the advertising process continue to run smoothly. Deadlines for the next issue of TV Week by way of when they had to be at the printer were referred to and questions of meeting the publication deadline discussed. Either Southdown had to take steps to reverse the shut down of the production process which had commenced in anticipation of completion or it had to be told that completion would go forward. · The plaintiff responded on 19 July indicating that it was proposing to complete. The stance which it took was that it did not require Southdown's agreement not to use the names TV Week Logies and TV Week Home of the Logies because Southdown had no legal basis upon which to use such names. The plaintiff made plain that it would, if necessary, take action to prevent the use of those names in connection with any magazine other than TV Week. 21 It is unnecessary to refer to the later correspondence because ultimately, following a continued exchange of carefully worded and doubtless legally drafted communications (described at the bar table as " pleasantries ") between the parties, a deed was entered into on 24 July 2002 between Southdown Publications and the plaintiff which provided very simply that: "Pursuant to clause 7 of the TV Week Deed and the Exercise Letter and with effect from the date of this Deed Southdown hereby assigns to ACP all of its right title and interest in and to the rights including (but without limiting the generality of the foregoing) in respect of each of the titles 'TV Week', 'TV Guide' and 'TV Times' and of the goodwill attaching to any or all of those titles." 22 The word "R ights " was defined as having the same meaning as was ascribed to that term in clause 1.2 of the 1980 deed. The events which following completion led to the application for interlocutory relief 23 On the day following completion, 25 July 2002, the plaintiff commenced these proceedings. The plaintiff's claims to relief were as follows: A declaration that the right title and interest under the 1980 Deed which Southdown 266 was bound to sell to the plaintiff included: a) All the goodwill, trade marks, business names and other rights in the Logies Activities, including the Logies trademarks, the Logies, New Zealand trademarks and the Logies business names (as each of those terms are defined in the summary of plaintiff's contentions). b) The right title and interest in the copyright in the subject matter set out in schedule 5 to the summons. c) An order that in performance of its obligations under the Sale Agreement Southdown 266 execute the instruments and do each of the things described in paragraph 35 of the summary of the plaintiff's contentions. d) An order that in performance of its obligations under the Settlement Deed, Pacific 896 execute the instruments and do each of the things described in paragraph 36 of the summary of the plaintiff's contentions. e) An order that in performance of its obligations under the Settlement Deed Jupelly cause Southdown 266 and Pacific 896 to do each of the things described in paragraphs 35 and 36 of the summary of the plaintiff's contentions. The First Edition 24 On 29 July 2002 the plaintiff published its first edition of TV Week magazine containing an image of the Logies statuette under which the statement " Home of the Logies " appears. The solicitors for Pacific Publications on the same day wrote to the plaintiff referring to this conduct as infringing their client's trade marks and arguably infringing common law marks belonging to their clients. A claim was made that this conduct also amounted to passing off and to a breach of sections 52 and 53 of the Trade Practices Act. A claim was made that the TV Week magazine so published was not "the Home of the Logies" and that use of the allegedly infringing logo falsely suggested a sponsorship or approval by Pacific Publications or some other form of association between ACP Publishing and Pacific Publications of the Logies award ceremony conducted by Pacific Publications. 25 The letter advised that in the light of the commencement of these proceedings the defendant considered that it would be an unnecessary waste of the Court's time to engage in additional interlocutory proceedings and that the defendant was willing to support an application to the Court for an expedited hearing of the proceedings so as to achieve resolution prior to the commencement of the organisation for the next Logies ceremony. Freehill's instructions were that as the next award ceremony was only scheduled for April 2003 there was no immediate need for the trade marks to be deployed. They advised however, that their clients would take steps to seek interlocutory relief if the plaintiff did not provide undertakings in relation to what was said to be its infringing conduct. An undertaking was sought from the plaintiff that it not use the allegedly infringing logo or the trademarks, such undertaking to be received by 30 July 2002 at 10am. The undertaking sought was that pending final resolution of these proceedings the plaintiff " would not use or authorise the use of the marks or any substantially identical or deceptively similar mark in relation to printed publications or entertainment services ." " The marks " were defined as the mark " Logies " and associated logo mark of the Logies statuette. 26 The response to this communication from the plaintiff's solicitors, Gilbert and Tobin, was in the following terms: " The registered Logie trademarks and the common law Logie trade marks" [" the Logie Marks "] have always been used in association with TV Week magazine and were part of the interest of Southdown acquired by our client pursuant to its exercise of the Savoy clause in the TV Week Deed of 6 August 1980. Any use of the Logie Marks in connection with a magazine title other than TV Week would constitute a passing off and misleading and deceptive conduct on behalf of your client. Our client will cooperate to expedite a final hearing of these proceedings and we suggest that the proceedings be listed on 9 August next for that purpose….In the meantime the status quo of the association of TV Week Magazine with the Logies should remain in place. That status quo has been the fact for over 40 years and has involved the statement that TV Week Magazine is the " Home of the Logies ". Urgency 27 The urgency of the present application brought by Pacific Publications is that the deadline for the printing of the next edition of TV Week Magazine apparently moved from late yesterday until today to permit the giving of this Judgment before that printing exercise would commence, is now only some hours away and may well simply as I have understood counsel for the plaintiff, be awaiting the handing down of this decision. Dealing with the issue – the evidence 28 It is common ground that on an interlocutory application the Court will not determine disputed questions of fact. 29 Many of the fundamental facts, matters and circumstances against which this decision requires to be given are however, not in issue. The convenient course is to set out a number of the matters which were before the Court following the filing of affidavits which were taken as read. Evidence of Mr Meikle of Pacific Publications 30 Mr Meikle gave evidence inter alia as follows: "Pacific Publications publishes a number of magazines in Australia, including " New Idea", "Girlfriend", "That's Life", "Home Beautiful", "Your Garden", 'B Magazine", "K Zone", "TV Hits " and "WOW What's on Weekly". "New Idea", "That's Life' and "WOW What's on Weekly" are weekly publications. Up until last Wednesday 24 July 2002 Pacific Publications published the magazine entitled TV Week in Australia…. During the time that I have been Chief Executive Officer of Pacific Publications I have been responsible for the day to day management of all the magazines within Pacific Publications portfolio. Key senior management for each title report to me and I report to the board. During the time that I have been Chief Executive Officer of Pacific Publications I have also been involved in the organisation of the Logie awards. I have ultimate responsibility for ensuring that the Logies are properly organised. In particular it is my job to sign off on all Logie expenses and authorise the guest list for the ceremony. I work in conjunction with senior staff within Pacific Publications in this regard. The organisation of the Logie awards which Pacific Publications carries out and which I oversee, includes negotiating and concluding contracts relating to the staging of the ceremony (addressing issues such as venue, catering and security) as well as contracts relating to the television broadcast of the ceremony. Pacific Publications is also responsible for the organisation of the voting process by which members of the public can vote for particular Logie awards. [Mr Meikle went on to give detail in the affidavit of the registered trademarks in respect of which Pacific Publication was the registered proprietor.] I am informed by Alan Webster, Family and Entertainment Group Marketing Manager for Pacific Publications and believe that the trade mark "Logie" and the associated statuette device have been used in connection with the promotion and conduct of the Logie award ceremony from at least 1980. Prior to September 2001 the organisation and conduct of the Logie awards was carried out by a company now known as PMP Publishing Pty Limited (then called Pacific Publications Pty Limited). Since September 2001 the organisation and conduct has been carried out by Pacific Publications. This change in organisational responsibility took place as a result of a restructuring of the corporate group of which Pacific Publications is part. I had the same responsibilities prior to the restructuring as I do now. Completion of the sale of Southdown's interest under the TV Week deed took place on 24 July 2002….Pacific Publications did not sell, transfer or assign the trade marks, any rights in relation to the trade marks or any other rights relating to the Logie awards as part of that completion. As owner of the trade marks, Pacific Publications is concerned that this unauthorised use of the statuette device and the mark Logie by ACP Publishing will mislead and deceive members of the public and will cause damage to Pacific Publications. The New TV Week Magazine as published by ACP Publishing looks substantially identical to the TV Week Magazine as previously published by Pacific Publications. However neither New TV Week Magazine nor its publisher, ACP Publishing has any association with the Logies. New TV Week Magazine is not, and ACP Publishing has never been, responsible for the organisation and conduct of the Logie award ceremony . Pacific Publications wishes to continue to organise the Logie awards and I am very concerned that a competing publisher is claiming to be in some way connected to or associated with the Logie awards in circumstances where they are not…. Pacific Publications currently organises the staging and conduct of the annual Logie awards. The awards ceremony takes place in April of each year. The next Logie are due to take place in April 2003. From my experience I am aware that the organisation of the voting process for the Logie awards commences approximately three months in advance of the award ceremony and is therefore scheduled to commence on or around January 2003. A number of other organisational activities relating to the Logies take place in advance of the voting process. In previous years such activities have commenced around six months prior to the staging of the Logie award ceremony. There is therefore no immediate need for ACP Publishing or ACP Magazines to use all or any of the trade marks." [Emphasis added] Evidence of Mr David Gardiner 31 Mr Gardiner of ACP gave evidence as follows: "As part of my role I sit in on monthly publishing meetings concerning a range of titles published by the ACP Group. I have done this for most of the past six years. The companies in the ACP Group publish over 100 magazines including approximately 20 weekly titles and 80 monthly titles. My role has included recently participating in publisher meetings relating to TV Week in anticipation of its publication by the plaintiff from 29 July 2002. In the course of attending those meetings and in my general role of supervision of the affairs of ACP Publishing and the plaintiff, I am closely acquainted with the magazine publishing activities undertaken by those companies and with a range of decisions made with regard to those magazines, including critical business decisions, major marketing decisions, staffing decisions and general operational matters. In my roles…..I was closely involved in the decisions made by the plaintiff and the ACP Group in relation to exercising the plaintiff's rights under the deed originally entered into on 6 August 1980 by Australian Consolidated Press Limited, News Limited and Southdown Publications Pty Limited. I became aware through many discussions and meetings within the ACP Group of the factors that influenced the decision to set in place a process that might ultimately and in fact did result in the payment of 60 million dollars by the plaintiff for the acquisition of the first defendant's interest under the 1980 Deed. Based on those discussions and considerations and on my own thoughts at the time I am able to make the observations set out below: A factor for ACP in its acquisition of TV Week magazine was the relationship between the magazine and the TV Week Logies and the effect of the TV Week Logies on the magazine's circulation and ultimately its profitability. ACP has formed the view that this association has been very important in the past and is capable of further development for the benefit of the magazine's overall process…. In general the most prominent and important page of a magazine such as TV Week is the front cover. Also an important page is the contents page which is the directory driving readers to specific stories and features particularly when this is on the first facing page after the front cover, ie page 3. In all editions of TV Week since approximately 1999 the Logie statuette device, together with the words TV Week appearing on the TV screen being held by the statuette figure and the words home of the TV Week Logies have appeared on page 3. [" TV Week home of the Logies device "] In my view the TV Week Home of the Logies device appears in a prominent and important position in the magazine. The initial business approach that ACP has decided to adopt with TV Week is to substantially retain the look and feel of the magazine that has been familiar to its readership of over 1,000,000 readers (weekly copy sales are presently approximately 270,000). This is an approach that is in my opinion an appropriate and sound business approach to take with a magazine such as TV Week. For example in the first edition of TV Week published by ACP, (publication date 29 July 2002 for the period 3 to 9 August 2002), ACP has retained the contents page on page 3 identifying the sections, " Cover Stories ", ' Features ", " Regulars " and " What's On ", together with a small number of picture leads to stories inside. It has also retained with limited re-design the banner at the foot of the page together with the TV Week Home of the Logies device. In the first edition of TV Week published by ACP, sections such as 'Up Front' on pages 4 to 5 and the section '& finally' on page 5 and sections continuing from there into the magazine, have been substantially retained with small changes in layout and formatting. In my opinion this continuity is an important part of reassuring the core buyers and readers of TV Week that the magazine continues to be the magazine that they have always enjoyed. The continuity includes the claim " TV Week Home of the Logies " that has been on page 3 for some years. In my opinion many existing TV Week readers would be well acquainted with the long standing association between TV Week and the TV Week Logies. That association would have been reinforced by the weekly appearance (on the prominent page 3) of the TV Week Home of the Logies device. For the TV Week Home of the Logies device to be removed from page 3 would break the sort of continuity that ACP has sought to maintain. It would be difficult to measure this effect on the readership. It would be almost impossible to quantify in money terms the effect on the loyalty of those buyers and readers should the Court ultimately decide that ACP was always entitled to include the TV Week home of the Logies device in the magazine. In my opinion a compelling reason for placing the TV Week Home of the Logies device in a prominent position on page 3 of TV Week for the last two years or more would be to reinforce the association between the magazine and the TV Week Logies. In my opinion the cumulative effect of having the TV Week Home of the Logies device on page 3 is greater than if it appeared occasionally, irregularly, or periodically by reason of the fact that it has appeared in the magazine each week over a long period of time. The cumulative effect of that weekly appearance is very likely to be weakened by its interruption now. In my opinion the long and exclusive association between TV Week magazine and the TV Week Logies has been strengthened by the consistency of that association. TV Week has been the only place (other than in very recent times the TV Week website) in which those wishing to vote in the TV Week Logie awards have been able to obtain a voting form. An interruption to that association would in my opinion weaken the value of both the TV Week Logies and TV Week. It would be very difficult to place any sort of precise figure on the weakening of the value if the Court ultimately determined that ACP was always entitled to include the TV Week Home of the Logies device in the magazine. The timing of the TV Week Logies awards is related to the annual commercial television cycle. A significant number of television shows eligible for Logie awards in a number of categories have annual seasons which end towards the end of the calendar year. For many years the beginning of the promotional and voting cycle of the TV Week Logies has been timed to pick up at the end of the annual television cycle. Thus in 2002 the first week of Logie voting commenced with the edition having issue date 20 January 2002. Behind tab 3 of exhibit DRG 1 is a table setting out the circulation figures for the 52 editions of TV Week published during the financial year 2001/2002……..ACP was provided these figures by the Pacific Publication/Southdown Publications as part of the information supplied to ACP pursuant to the 1980 Deed. Each issue of TV Week covers a particular week of television programming from Saturday to the following Friday. In order to be in the readers' homes well before that programming week begins, the magazine appears on news stands on the Monday preceding the Saturday of that programming week. The table in exhibit DRG 1 identifies the Monday on which the edition appears on news stands as being the issue date. I have identified the issues for weeks 30 to 47 as being issues particularly affected by the coverage of various stages of the TV Week Logie awards. This is supported by the two page summary of the 2001 to 2002 editions of TV Week from 29 December 2001 to 12 July 2002 analysing features about the TV Week Logies that appears behind tab 4 of the exhibit…..There is a notable increase in circulation including the peak circulation in week 31, that is in my view attributable to the TV Week Logie awards voting that takes place during that period. Coverage of the TV Week Logie awards typically carries through until the TV Week Logies award winners are announced in the issue released in week 45. Further stories relating to the TV Week Logie awards appear in the next two weeks. At the foot of the table [a calculation has been carried out] that the average circulation of copies for the weeks other than weeks 30 to 47 and for weeks 30 to 47 (the Logie related issues). The increased circulation of 12,000 a week on average for weeks 30 to 47 amount in broad terms to $600,000 of revenue for the magazine simply by reference to the cover price. ACP proposes by a range of measures to increase the circulation of TV Week particularly around the time of the Logies. If it is successful the increased revenue referable to the Logie related issues will be considerably larger than that figure. If the continuous link between TV Week and the TV Week Logies which has been carefully nurtured to date is lost, ACP's ability to build on that link and achieve greater circulation may well be impaired in a way that will ultimately be very difficult to assess and quantify. I am aware of events that have originated as part of the business of a magazine and have been promoted exclusively in association with that magazine. For example Cleo, another magazine within the ACP stable, has for many years run and promoted an event called Cleo Bachelor of the Year. As with the TV Week Logie awards, there are nominations which are publicised in the magazine, the voting is exclusively arranged by the magazine (in the case of Cleo Bachelor of the Year by a chosen panel) and there is a major event associated with the magazine, highlights of which are televised under arrangement with the magazine. Another similar event, although not on the same scale, is the competition associated with Dolly magazine known as Dolly Model Search. I understand that on or about 28 September 2001 the fourth defendant transferred a number of business names and assigned a number of registered trademarks to the second defendant…..Those business names included the New South Wales registered business name " TV Week Logies ", the New South Wales registered business name " Logies 2000 " and the New South Wales registered business name " Logies '. The registered trade marks included the two registrations for the Logies statuette logo and the two registrations for the word mark " LOGIE ". To the best of my knowledge the plaintiff was not informed of and was not aware of these transfers and assignments. As I understand it 28 September 2001 was the date on which the Seven Network acquired 50 per cent of the Pacific Publications/Southdown Publications business. [Reference was then made by the deponent to the payment on 24 July 2002 of the sum of 60 million dollars and to the documents which were then executed by the plaintiff, the first defendant and the second defendant in the form of the five listed deeds of assignment: (a) Deed dated 24 July 2002 between the plaintiff and the first defendant; (b) Deed of Assignment – Australia dated 24 July 2002 between the plaintiff and the first defendant; (c) Deed of Assignment – New Zealand dated 24 July 2002 between the plaintiff and the first defendant; (d) Deed of Assignment of Copyright dated 24 July 2002 between the plaintiff, the first defendant, and the second defendant; (e) Deed of Assignment of Domain Name dated 24 July 2002 between the plaintiff and the second defendant; and (f) Statement of Change in Persons Form re Business Name "TV Week" dated 24 July 2002.] I am aware that the defendant's arrangements for the presentation of the TV Week Logies award ceremonies up to and including 24 July 2002 included arrangements with Nine Network Australia Pty Limited and Crown Limited. I expect to be involved in due course in discussions with Nine and Crown with respect to the arrangements for the presentation of the 2003 TV Week Logies Awards." Evidence of Mr O'Brien 32 Mr O'Brien is a solicitor and partner of Gilbert and Tobin. He gave evidence including the following: " Business Names Appearing behind the indicated Tabs of Exhibit MOB-1 are Registered Business Name searches which I caused to be obtained in relation to each of the business names referred to in Schedule 4 to the Summons: a) Tab 5: BN 83441798 – TV WEEK LOGIES; b) Tab 6: BN 83441801 – LOGIES 2000; and c) Tab 7: BN 83441802 – LOGIES. Broadcast Rights Behind Tab 8 of Exhibit MOB-1 is an agreement dated 11 April 2000 between Pacific Publications Pty Limited ACN 053 814 878 (the Third Defendant) and Nine Network Australia Pty Limited ( Nine ) relating to the telecast rights for the TV Week Logie Awards for the years 2001, 2002, 2003, 2004 and 2005. Also behind Tab 9 of Exhibit MOB-1 is an invoice issued to General Television Corporation Pty Limited (which I know to be the operator of Channel Nine in Melbourne) by the Second Defendant. I know General Television Corporation Pty Limited and Nine Network Australia Pty Limited to be owned by the same ultimate parent as the Plaintiff, Publishing and Broadcasting Limited. Staging Rights Behind Tab 10 of Exhibit MOB-1 is an agreement dated 11 February 2002 between Pacific Publications Pty Limited ACN 097 410 896 (the Second Defendant) and Crown Limited ( Crown ) relating to the staging of the TV Week Logie Awards at the Crown Casino, Melbourne for the years 2002, 2003, and 2004. I know Crown to be wholly owned by the same ultimate parent of the Plaintiff, Publishing and Broadcasting Limited." 33 Reference was also made by Mr O'Brien in this affidavit to a statutory declaration made on 10 May 1991 by Elizabeth Dulcie Boling, then a director of Nationwide News Pty Limited. This was an application apparently made in relation to an application by Nationwide News for registration of its trade mark LOGIE. The statutory declaration includes the following: "The said trade mark was first used in Australia by the company approximately 31 years ago and has been used throughout Australia since that date to identify printed publications, magazines and other printed matter as well as entertainment services and promotional activities [hereinafter referred to as " the said goods and services "] sold and/or sponsored by the company. The said trademark is derived from the middle name of John Logie Baird, the inventor of television. The word was selected because the Company wanted the trademark to have some general association with television and to give that trademark a particular " aura ". [Reference was made to the company's records recording retail sales in Australia of the goods and services from 1985 to 1990 which generally ran between 5.2 million and 6.6 million.]" 34 The declaration continued: "I have also ascertained from the Company's records that the amount spent on advertising and promoting the said goods and services under the said trademark in Australia over the past five years involves a direct cost figure of between 500,000 and 750,000 dollars. An indirect costing of such advertising and promotional activity including all TV and on page comments would run into millions of dollars." The defendant's submissions 35 The defendant's written submissions were inter alia in the following terms: "6. Pursuant to clause 7.2 of the TV Week deed, the interests of Southdown under the TV Week deed which were to be sold to ACP Magazines were defined as: "the right title and interest of [Southdown] in and to the Rights including (but without limiting the generality of the foregoing) in respect of [TV Week incorporating TV Times and TV Guide] and of each of the separate titles "TV Week", "TV Times" and "TV Guide" and of the goodwill attached to any or all of those titles." The "Rights" are defined in clause 1.2 as the "ACP Rights" and the "News Rights". The "ACP Rights" are defined in Recital A as: "all of the goodwill trademarks business names and other rights… which permit [ACP] to publish and are sufficient for the publication of the magazines called "TV Times" and "TV Guide". The "News Rights" are defined in Recital B as: "all of the goodwill trademarks business names and other rights… which permit [News] to publish and are sufficient for the publication of the magazine called "TV Week". 7. Thus, the rights sold to ACP Magazines pursuant to clause 7.2 are all of the goodwill, trademarks, business names and other rights which permit Southdown to publish and are sufficient for the publication of the magazine "TV Week". 8. The rights sold are limited. They include the trademarks "TV Week". They do not include any rights relating to the Logies, because these do not "permit" Southdown to publish the magazine TV Week, and rights which do not include these rights are sufficient for the publication of TV Week. ACP Magazines can happily and freely publish TV Week magazine without any of the Logies rights, which relate to a television awards ceremony conducted by Pacific Publications. ACP Magazines does not acquire the right to publish TV Week in any particular form, or including any particular content. It merely acquires rights sufficient to publish TV Week. 9. The matters referred to above are consistent with the apparent function of the TV Week deed, which was to combine several titles and convert the rights of Australian Consolidated Press Limited in two of these titles into a right to obtain a profit share. The TV Week deed does not deal with the Logies ceremony, which had been carried on for twenty years prior to the TV Week deed. 10. It is difficult to see how ACP Magazines could argue that it has obtained any rights to the Logies. ACP's claim may result from a misapprehension that it has acquired the business of TV Week, but this is not consistent with the limited rights conferred under the TV Week deed. The new TV Week magazine is not the same as the old TV Week magazine. It is a new magazine, published by a new publisher, put out under the old title. Obviously, ACP Magazines will be attempting the attract the old customers to the new product and it is not surprising that the get-up is similar. This does not give ACP Magazines any rights beyond the rights sufficient for the publication of "TV Week". 11. ACP Magazines appears to contend that, pursuant to the TV Week deed, it was entitled to acquire rights, including trade marks, in relation to a separate television ceremony known as the "Logies" conducted by a separate company, Pacific Publications. This claim by ACP Magazines should properly be viewed as verging on hopeless. 12. Even if, contrary to these submissions, the Logies rights would, if owned by Southdown, amount to rights falling within the definition of "Rights" in the TV Week deed, the Logies rights would not pass under clause 7.1 because they are not owned by Southdown. They are owned by Pacific Publications. They therefore cannot form part of Southdown's "interest" under clause 7.1 of the TV Week deed. Very strong prima facie case 13. Pacific Publications is the registered proprietor of the trade marks for the words "LOGIE" and the Logie statuette device in respect of magazines. 14. The first edition of TV Week since the sale to ACP Magazines on 24 July 2002 went on sale on Monday, 29 July 2002. On the contents page of the magazine appears the Logies statuette trade mark and the text "Home of the Logies". The contents page states that the new TV Week is published by ACP Publishing Pty Limited (" ACP Publishing") and is printed by PMP Print. ACP Publishing is a separate company from ACP Magazines. 15. Pacific Publications has not authorised the use of the statuette device or the phrase "Home of the Logies". 16. The statement that the new TV Week is "Home of the Logies" conveys a representation that the new TV Week (or the corporation which publishes TV Week) has the sponsorship and approval of, or is otherwise associated with, the people who organise and conduct the Logies Awards ceremony. This is a false representation: neither TV Week nor ACP Publishing (or ACP Magazines) has any association with Pacific Publications. This conduct infringes sections 52, 53(c) and 53(d) of the Trade Practices Act 1974. 17. Further, the reproduction of the statuette mark on the contents page and the statement "Home of the Logies" amounts to a use of the Pacific Publications trade marks in breach of section 120(1) of the Trade Marks Act 1995. Specifically, it amounts to: (a) the use as a trade mark; (b) in relation to magazines (being goods in respect of which the Pacific Publications' trade marks are registered); and (c) of a mark which is substantially identical with or deceptively similar to: (1) The LOGIE word mark (the word "Logies" as used in the new TV Week magazine is at least deceptively similar to, if not substantially identical with the mark LOGIE); and (2) the Logie statuette mark. (It appears that the statuette used in the new TV Week may have some writing in the rectangular box, but is still at least deceptively similar to, if not substantially identical with, the statuette mark). 18. In relation to the question of trade mark use, both the statuette mark and the word "Logies" are used in such a way that consumers are told that the TV Week magazine is to be distinguished from the products of others traders partly because it is described by the Logies marks ("Home of the Logies"), and are thus used as trade marks: Mark Foy's Limited v Davies Coop & Co Limited (1956) 95 CLR 190 at 205. 19. The rights sold under the TV Week deed on 24 July 2002 were sold to ACP Magazines. The first edition of the new TV Week is stated to be published by ACP Publishing. In the circumstances, both companies should be restrained from: (a) representing that the new TV Week is the "Home of the Logies"; and (b) infringing the registered Logies trade marks of Pacific Publications. 20. It is unacceptable that these companies, which are neither registered proprietors of the Logies trade marks nor assignees of the marks, should use the marks in the new TV Week magazine, having been put on notice for a lengthy period that no Logies trade marks would be assigned. Such conduct is flagrant and provocative, and a clear breach of the rights of Pacific Publications under the Trade Marks Act 1995. The conduct, if it persists, will risk diluting the trade marks in the sense of breaking the association between the proprietor of the trade marks and the use of the marks, and the proprietor's control over that use. 21. It is also unacceptable that representations are being made to consumers that the new magazine is the Home of the Logies, when the new magazine has no association with Pacific Publications, which conducts the Logies ceremony. Balance of convenience 22. The factors referred to above need to be balanced against the reasons (if any) for ACP Magazines and ACP Publishing to use the Logies marks. There is no pressing need for them to use the marks and there is no need for them to state that they are "Home of the Logies". They should not do so in circumstances where it is misleading and an infringement of the rights of Pacific Publications. 23. In circumstances where both sides contend that they are entitled to the Logies rights, the status quo is best preserved by there being no deployment of those rights in the short term and by ACP refraining from laying claim to the Logies in the public way in which that claim is made on the second page of the new TV Week. To leave one party, ACP, free to deploy rights in circumstances where there is a strong argument that it has no right to do so is unfairly prejudicial to the interests of Pacific Publications. " The plaintiff's submissions 36 The plaintiff's written submissions were inter alia: "1. On 24 July 2002, the plaintiff completed the purchase for $60 million from the first defendant of a business which had been established for many years prior to 1958. That was the business of publication and sale of the magazine known as "TV Week". 2. The contract under which the plaintiff purchased that business from the first defendant resulted from the exercise by the plaintiff of rights having their origin in a deed made in 1980, whose provisions, by novation in 1992, regulated sale and purchase of the respective interests of the plaintiff and the first defendant in the TV Week business. 3. Publication of the magazine "TV Week" in Australia predated 1958. In that year, the publishers of the magazine originated an award ceremony, initially referred to as the "TV Week Awards" and by 1961 dubbed variously "The TV Week Logie Awards", "The TV Week Logies" or "The Logies". 4. In 1961, the TV Week Logie Awards were first televised. In the ensuing 41 years, the TV Logie Awards have continued in the same way. A right to participate in the voting process in respect of the Logie Awards has been limited to those utilizing a voting coupon contained in TV Week Magazine. This has substantially enhanced and promoted sales of the magazine. 5. From time to time various television networks have acquired rights to televise the awards. Since 1999, the television rights in respect of the Logie Awards have been held by the Channel 9 Network under a five year contract which expires in 2005. 6. Under the terms of the 1980 deed as novated in 1992, the first defendant was the owner of the interest originally characterised in the 1980 deed as the "News" rights. The rights held by the plaintiff pursuant to the 1980 deed as novated in 1992 were a right to payment of one half of the net profits from the magazine before tax. In 2000, a dispute arose between the plaintiff and the second defendant concerning the quantum of the plaintiff's entitlement. 7. The dispute resulted in earlier proceedings in this Court, the second third and fourth defendants became parties to a deed dated 14 March 2002 under which they became bound (clause 4.9) to do all things necessary and provide all assistance required to ensure that the first defendant complied with its obligations under the 1980 deed. 8. The pivotal obligation of the first defendant on settlement of the purchase by the plaintiff is found in clause 7.1 of the 1980 deed. The first defendant, in consideration of the purchase price of $60 million was bound to complete the sale to the plaintiff of its right title and interest in the goodwill trade mark business names and other rights which permitted the first defendant to publish and was sufficient for the publication of the magazine called "TV Week" [Recital B]. 9. The purchase by the plaintiff of the TV Week business for $60 million was settled on 24 July 2002. At settlement, the first defendant handed over to the plaintiff various documents including registered trade marks for the name "TV Week" and for logos used in the magazine "TV Week". However, the first defendant refused to deliver over or to procure the delivery of the four registered trade marks which are an issue in the present application. Those are two registered trade marks consisting of the word "Logie" (Nos 520305 in class 16 and 520306 in class 41) and two registered marks comprising a logo depicting the statuette which is presented to award winners annually at the Logie Awards (No 520303 in class 16 and No 520304 in class 41). (Similarly, a number of business name registrations were not transferred.) 10. The parties agreed that settlement would proceed on 24 July 2002 and that the dispute between them as to the requirement for assignment of the Logie trade marks would remain outstanding and be determined in future proceedings. The plaintiff thereafter took over the publication of the magazine "TV Week". 11. Immediately following completion of the purchase on 25 July 2002, the plaintiff instituted these proceedings which claim in substance specific performance of the outstanding obligations of the various defendants to co-operate in the transfer of rights which were required to be conveyed in relation to the TV Week business pursuant to the 1980 deed including the four "Logie" trade marks. 12. In the first issue of TV Week Magazine published following the sale, the plaintiff continued the use of the phrase "TV Week Home of the Logies" and a reproduction of the gold "Logies" statuette. This perpetuated a particular use of those items which had originated in about October 1999. 13. The present application by the second defendant for an interlocutory injunction to restrain suggested infringement by the plaintiff of the four registered trade marks arises in the following circumstances: (a) the business of publication of TV Week Magazine has been entirely transferred to the plaintiff; (b) the second defendant has recently launched a competitive magazine entitled "WOW" - "What's on Weekly". It has no contractual rights or obligations with respect to the televising of the Logie Awards but has an existing contract with Crown Casino for the production of those awards; (c) the third defendant has a contract with the Channel 9 Network for the presentation of the annual Logie Awards but no contract with Crown Casino in respect of that event; (d) both the Channel 9 contract and the Crown Casino contract entered respectively by the third and second defendants require that the awards ceremony be promoted through TV Week Magazine and describe it as "TV Week Logie Awards"; (e) the plaintiff as the new owner of the TV Week Magazine business is within the same group of companies as both Crown Casino and the Channel 9 Network and is accordingly in a position to novate or renegotiate both of those contracts; (f) neither the first or second defendant is in a position legally to make a statement "Home of the Logies" in any of its current or future magazine. Such a statement would constitute misleading and deceptive conduct having regard to the history of association between the Logie Awards and "TV Week" over the past 40 years at least. 14. On the issue of infringement, the plaintiff intends to submit as follow: (a) the use by the plaintiff of the words "home of the Logies" does not infringe s.120 of the Trade Marks Act 1995; (b) the plaintiff is within s.122(1)(b) of the Act; (c) the plaintiff is also within s.122(1)(f) of the Act and has lodged its own application for registration of similar marks; (d) having regard to the separation of the registered Logie trade marks from the publication of the magazine, the Logie trade marks are liable to be removed from the Register by virtue of s.88(2)(c) of the Act. Having regard to these considerations, the claim for infringement of the trade marks although arguable is very weak in this matter. 15. As to the issue of balance of convenience or balance of justice between the parties the following matters are relevant: (a) the second defendant has a weak case on infringement; (b) the continuation of the long term association between TV Week Magazine and the Logies awards is a very significant matter for the future business of the plaintiff having taken over publication of the magazine; (c) the defendants have no proposal to use the registered trade marks which has been articulated in these proceedings and could not use the words "Home of Logies" in relation to any of their other publications; (d) the likely damage to the plaintiff if restrained from continuation of the conduct complained of is unlikely to be reasonably compensated in damages; (e) a trial of the proceedings before the end of this year and before the annual cycle of voting in respect of the Logie Awards is possible." The Principles 37 In approaching the interlocutory application it has seemed to me that the principles which govern the Court's approach to the question are those generally dealt with and set out in Appleton Papers Inc v Tomasetti Paper Pty Limited [1983] 3 NSWLR 208. Of course the references to plaintiff in those statements of principle are a reference to the applicant or moving party, here to Pacific Publications, seeking interlocutory relief. 38 In Appleton, McLelland J pointed out the importance of recalling that the Court here deals with a discretionary power conferred on the Court in very general terms, referring to section 66(4) of the Supreme Court Act, which provides that the Court may at any stage of proceedings on terms grant an interlocutory injunction in any case in which it appears to the court to be just or convenient so to do. 39 As McLelland J made plain at page 216 citing from the judgment of Moffitt P in Stollznow v Calvert [1980] 2 NSWLR 749: "While useful guidance is provided by the manner of exercise of the discretion in other cases and by the factors considered in those cases to favour the exercise of the discretion in a particular way, each case must depend upon its own facts. It would be contrary to what I understand to be the accepted law in this country to confine the exercise of a judicial discretion by judge made rigid formulae." 40 At page 214 McLelland J cited the full High Court Decision in Beecham Group Limited v Bristol Laboratories Pty Ltd (1968) 118 CLR 618 at 622, 623 where the court had said that in dealing with applications for interlocutory injunctions: "The court addresses itself in all cases, patent as well as other, to two main inquiries. The first is whether the plaintiff has made out a prima facie case, in the sense that if the evidence remains as it is, there is a probability that at the trial of the action the plaintiff will be held entitled to relief….The second inquiry…is whether the inconvenience or injury which the plaintiff would be likely to suffer if an injunction were refused outweighs or is outweighed by the injury which the defendant would suffer if an injunction were granted ." [Emphasis added] 41 At page 214 McLelland further referred to Shercliff v Engadine Acceptance Corporation Pty Ltd [1978] 1 NSWLR 729 at 736, 737 where the Court of Appeal explained the special sense in which the expression " probability " was used by the High Court in the Beecham case and in particular had said that it did not refer either to a prediction as to the ultimate result or to a better than even chance of ultimate success. The Court said that: "The degree of probability or likelihood of success is simply that which the Court thinks sufficient in the particular case to warrant preservation of the status quo." 42 As McLelland J reminds us at page 214, the Court had already stated that in that case the balance of convenience was very strongly in favour of the granting of interlocutory relief (to preserve the status quo), and accordingly the Court's statement, McLelland J believed, might be generalised by saying: "that the degree of likelihood of success to be demonstrated is that which the Court thinks sufficient in the particular case to warrant consideration of where the balance of convenience lies." 43 McLelland J also cited from the Privy Council decision in Eng Mee Yong v Letchumanan [1980] AC 331 at 337 where the Privy Council had expressed the relevant principle in terms derived from the American Cyanamid case as follows: "The Court's power to grant an interlocutory injunction is discretionary. It may be granted in all cases in which it appears to the Court to be just and convenient to do so. The guiding principle in granting an interlocutory injunction is the balance of convenience; there is no requirement that before an interlocutory injunction is granted the plaintiff should satisfy the Court that there is a 'probability', a 'prima facie case' or a 'strong prima facie case' that if the action goes to trial he would succeed. But before any question of balance of convenience can arise the party seeking the injunction must satisfy the Court that his claim is neither frivolous nor vexatious. In other words that the evidence before the Court discloses that there is a serious question to be tried…." 44 McLelland J at 215 expressed the view that what was said in the Eng Mee Yong case is not inconsistent in substance with what is said in the Shercliff case notwithstanding that the form of words used in the two cases is different and in the Eng Mee Yong case, the expressions " probability " and " prima facie case " seem to be used in somewhat different senses to those in which the same expressions are used in the Beecham case as explained in the Shercliff case. McLelland J pointed out that it must be remembered that: "no court should consider itself fettered by the form of words as if it were a phrase in an Act of Parliament which must be accepted and construed as it stands." 45 McLelland J further noted that in considering the question of the balance of convenience as contemplated in the Eng Mee Yong case and the American Cyanamid case, the relative apparent strength of each party's case may be a relevant matter. As McLelland J pointed out, this accords with what the Supreme Court of Victoria said in Magna Alloys & Research Pty Ltd v Coffey (1981) VR 23 in the following passage relating to the High Court's Judgment in the Beecham Group case: " Having regard to the fact that the High Court cited the Judgment of James LJ in Plimpton v Spiller with approval, the reference in Beecham's case...to a probability of success should not be understood as meaning that the plaintiff must show that at trial it is more probable than not that he will succeed. Indeed the High Court made it clear that that is not the issue for the judge to determine for in the passage already cited the Court said: '…The Court does not give or withhold interlocutory relief upon a forecast as to the ultimate result of that case.' Rather the High Court should be understood as referring to the degree of probability which may be high or low. No doubt the strength or weakness of the plaintiff's case will be relevant when the judge comes to the question of balance of convenience if he ever does." 46 At page 216 McLelland J cited Lord Diplock's Judgment in American Cyanamid i n terms of the power to grant interlocutory injunctions. The passage was as follows: "My Lords, when an application for an interlocutory injunction to restrain a defendant from doing acts alleged to be in violation of the plaintiff's legal right is made upon contested facts, the decision whether or not to grant an interlocutory injunction has to be taken at a time when ex hypothesi, the existence of the right or the violation of it or both is uncertain and will remain uncertain until final judgment is given in the action . It was to mitigate the risk of injustice to the plaintiff during the period before that uncertainty could be resolved that the practise arose of granting him relief by way of interlocutory injunction but since the middle of the nineteenth century this has been made subject to his undertaking to pay damages to the defendant for any loss sustained by reason of the injunction if it should be held at the trial that the plaintiff had not been entitled to restrain the defendant from doing what he was threatening to do. The object of the interlocutory injunction is to protect the plaintiff against injury by violation of his right for which he could not be adequately compensated in damages recoverable in the action if uncertainty were resolved in his favour at the trial. But the plaintiff's need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated under the plaintiff's undertaking in damages if the uncertainty were resolved in the defendant's favour at the trial." [Emphasis added] 47 At page 216 McLelland J pointed out that it is the task of the Court on an application for an interlocutory injunction to seek to fulfil this purpose in the manner best calculated to achieve justice between the parties in the circumstances of the particular case. McLelland J pointed out that with the possible exception of a passage in the Beecham Group case which deals with what are said to be special considerations arising in a patent suit in which there is a substantial issue as to the validity of the patent which McLelland J then proceeded to consider: "…the decisions to which I have already referred provide authoritative guidance (not however to be interpreted as rigid formulae) as to how this task of the Court should normally be approached but do not deny the proposition that the ultimate task of the Court is as I have described it.' 48 I have endeavoured to approach the present application for interlocutory relief applying the principles as expressed by McLelland J The matter is put shortly by Meagher Gummow and Lehane, Equity Doctrines and Remedies 2nd Edition at paragraph 2168: "What the plaintiff must prove is that he has a serious not a speculative case which has a real possibility of ultimate success and that he has property or other interests which might be jeopardised if no interlocutory relief were granted. Then it comes a matter of seeing if in all the circumstances of the case the Court should nonetheless exercise its discretion by declining to issue an interlocutory injunction." 49 Likewise in Meagher Gummow and Lehane at paragraph 217, the learned authors say: "What is meant by saying that the Court must take into account the balance of convenience and the question of hardship is that it must consider carefully what effects the granting of an injunction will have on both parties and in particular whether to grant one would cause hardship to the defendant or to refuse one would cause hardship to the plaintiff." The Question of Construction 50 As McLelland J clearly recognised the question of the " balance of convenience" may require to include as a relevant matter the relative apparent strength of each party's case. 51 As both counsel seemed to accept during argument, the real question concerns the meanings: · In recital B of the 1980 deed of the words: "The goodwill, trade marks, business names and other rights which permit [the relevant entity] to publish and are sufficient for the publication of the magazine called "TV Week". · In clause 1.2 of the 1980 deed of the words "t he Rights ", apparently a composite description of the anterior ACP rights and the News rights but now merged in "t he Business " as described in clause 1.1. 52 Clearly a construction issue of importance is also raised by use of the words in the Savoy Clause 7.2: "the right title and interest [of the relevant entity] in and to the Rights including (but without limiting the generality of the foregoing) in respect of the new title and of each of the separate titles `TV Week', `TV Times' and `TV Guide' and of the goodwill attached to any or all of those titles." 53 The seminal questions which apparently will require to be determined on the final hearing are: · What is the legal description and/or proper characterisation of one or more of the rights; · to use the Logies logo; · to use the words " Home of the Logies "; · to use the words " Home of the Logies " in association with the Logies logo; · to claim to be a magazine which is the Home of the Logies; · to use the subject trade marks; ["the legal description/proper characterisation question "]; · Which, if any, of the rights having those legal descriptions or characterisations, may be said to fall within the meaning of the words " the Rights " upon the proper construction of the use of those words appearing in clause 1.2 and clause 7.2. 54 The submission of the defendant already outlined is that what is included within the meaning of the words " the Rights " is: "the goodwill, trademarks, business names and other rights which permit the relevant defendant to publish and are sufficient for the publication of the magazine TV Week." 55 There is then the above described legal description/proper characterisation question raised for determination. What precisely, for example, are the intellectual property, contractual or other rights, if any: · To use the words " Home of the Logies " in association with the Logies logo; · To claim to be a magazine which is the Home of the Logies. 56 It is certainly apparently the case that (and the defendants do not contend to the contrary for very obvious reasons) there has been a very long and integral connection between the magazine TV Week and the TV Week Logies. 57 The expression " Home of the Logies " is seemingly a fairly loose expression but it was obviously built up over many years where, from a date well before 1980, indeed from 1958, the Logies have apparently been annually awarded and at least from 1961 and possibly earlier, the association and connection between TV Week and the Logies has apparently been in place. 58 However, it must be accepted that, as I understand the evidence, ACP Magazines as at the time when this judgment is delivered, has no contract in place of any type for the presentation of the 2003 Logies awards or for the televising of those awards. It does not own the trade marks in question. Notwithstanding the submissions from the plaintiff in this Court in relation to suggestions that relevant provisions of the Trade Marks Act 1995 may be engaged upon a regular application to cancel the registration of the trade marks or to remove or amend an entry remaining on the register or to enter a condition or limitation affecting the registration of a trade mark that ought to be entered [cf section 88 in particular; see also sections 41, 43], and notwithstanding the submissions which were directed to the suggestion that once a proprietor of a business no longer had an interest in that business, there were mechanisms under the 1995 Act to rectify the register by cancellation of the mark because the mark now having become disassociated from a particular business, may have become likely to deceive or cause confusion, there is no evidence of any such application having been made. 59 Apparently the plaintiff has lodged its own application for registration of similar marks. What was as I perceived it clearly threatened through what I infer from the submissions of the plaintiff was the making of applications with respect to cancellation of, or the removal or amending of entries remaining on the register and/or for the entry of a condition or limitation affecting the registration of the trade mark. The possible claims were not formulated with precision from the bar table. 60 In the result it seems that until the plaintiff, whether by concerted activity seeking relief pursuant to its suggested rights to such under the Trade Marks Act or by a successful commercial negotiation to acquire the legal rights to the intellectual property in respect of which Pacific Publications is the owner and proprietor, must rest upon it's chances of success in these instant proceedings, as the vehicle to make good the proposition that it is as correct today as it was on the day preceding the 24 July 2002 settlement, for a statement to be published to the world at large to the effect that the magazine TV Week is the " Home of the Logies' . That is why the intricate legal question of the plaintiff's prospects of success in these proceedings becomes, within the principles as expounded by McLelland J, of such special importance on this particular interlocutory application. 61 This is not in any sense to down-play the critical importance of the balance of convenience which is generally considered and again referred to below. The attribution of blame for how the current situation has come about 62 On the evidence presently before the Court it is not possible to do otherwise than to accept that the high significance of permitting the 24 July settlement to go forward without completing a consensual negotiation of issues which having been raised in the correspondence, meant that both parties must have perceived that this was 'an accident waiting to happen'. Each must be taken to have, with eyes 'wide open', elected to stand on their legal rights. This circumstance yet again simply confirms that those legal rights are extremely significant to say the least. 63 Although the plaintiff in at least some of the submissions, used words which appear to suggest that loosely speaking, it claimed to have purchased " the goodwill " in the magazine TV Week, that submission is of course very strongly opposed by Pacific Publications. Its submission is that all that the plaintiff may lay claim to is an entitlement to receive all of Southdown's right, title, and interest in and to the 'Rights' as defined by the 1980 deed. The plaintiff's submissions indeed seem to accept that the pivotal obligation of Southdown Publications on settlement on 24 July 2002: "was...to complete the sale to the plaintiff of its right, title and interest in the goodwill, trade mark, business names and other rights which permitted the first defendant to publish and were sufficient for the publication of the magazine called TV Week. [plaintiff's written submissions paragraph 8]. 64 There is of course a dimensional difference between the concept of a sale of a business and the concept of a transfer of closely defined " rights " by reference to the construction of a written instrument. 65 On the evidence before the Court at the interlocutory stage it would appear that there is little doubt but that the goodwill of, and relating to, the undertaking which until settlement published TV Week, included as part and parcel thereof the benefit of the clear association which the subscribers and public ascribed to the strong and extremely valuable connection between the magazine and the Logies in terms of every parameter of the Logies. But that is not the question which falls for determination where the respective legal rights of the defendants and the plaintiffs is required to be assessed together with the balance of convenience. 66 The plaintiffs extended and arguably alternative submission seeks to draw attention, on the construction issue, to the significance of the merger of rights which clauses 1.1 and 1.2 of the 1980 deed recognise and deal with. The proposition is that in 1980 for the first time, there commenced a merged business and that it is that merged business with all of its ingredients, which became the subject of ownership rights on the part of News and of profit-sharing rights on the part of ACP [the original party]. The consequential submission is that it is all of the goodwill of, and in relation to, that business which became part of the bundle of rights to which the plaintiff, following the exercise letter and the 24 July 2002 deed, became entitled as a matter of contract and in equity. Whilst this construction may ultimately be found to be correct, my impression, albeit at this interlocutory stage and which is not to be taken as in any sense a final view, is that the submission has very real difficulties with it. The defendant's submissions have far more substance. 67 It is important as a matter of the matrix of facts, against which this judgment is being delivered, that it be recognised that the defendant's strength clearly reposes in the obvious fact that the Pacific Publications remains the proprietor of the relevant registered trademarks and the registered proprietor of a number of business names incorporating the word " Logies ". 68 It seems to be common ground that the third defendant Pacific 878 and not the second defendant [one must be careful because the third defendant in its previous life was known as " Pacific Publications "], has an extant agreement with 9 Network Australia for the telecast rights of the TV Week Logie Awards for the five years 2001 up to 2005 [cf tab 8 of exhibit R2]. A problem for Pacific 878 may very well be that paragraph 3 of the Letter Agreement of 11 April 2000 provides that it will not, during the five-year term of that Agreement, involve TV Week in any other Australian television industry award ceremony. 69 Likewise and possibly yet a further problem may appear to exist by paragraph 7 which imports the schedule to the Letter Agreement which in turn identifies the contribution of the Pacific 878 as including a number of matters which, presumably without some arrangement between it and ACP Magazines, could not be carried out, such as, for example, a six-week editorial campaign promoting the public voting process through TV Week magazine and the TV Week website. 70 Pacific Publications entered into a Letter Sponsorship Agreement with Crown Limited on 11 February 2002 in connection with the staging of the 2002 TV Week Logie Award ceremony and in respect of several subsequent years, the staging of such ceremonies. That Agreement includes a number of references to TV Week as, for example, an obligation in Pacific Publications to provide Crown logo recognition on voting forms in TV Week during each six-week campaign on the " TV Week.com.au " voting site. Balance of Convenience 71 Where then does the balance of convenience lie in terms of the proper exercise of the Court's discretion? Status Quo 72 Both sides claim the benefit of the status quo but they have diametrically opposite submissions as to what the status quo is. The defendants submit that it is incorrect to say that the status quo is that the " Home of the Logies " logo has always appeared in the TV Week magazine. On the defendants' submission, a dimensional shift occurred when settlement took place on 24 July 2002 and a change in ownership of the magazine took place. The proposition is that seen from the defendants' perspective, the status quo was that the defendants published a magazine in which they deployed their own trademark and that the plaintiff, having in accordance with its legal entitlement, commenced to publish the magazine, had simply not consulted Pacific Publications and had not obtained any relevant agreement with the registered proprietor of the relevant trade marks to permit them to be deployed by the plaintiff. Further, the submission draws attention to what was earlier described as the " schism submission ", namely the distinction between on the one hand, Pacific Publications' legal title to the trade marks and on the other hand, the obligations of Pacific Publications pursuant to the March 2002 settlement deed whereunder Pacific Publications agreed that it would do all things necessary and provide all assistance required to ensure that Southdown 266 complied with its obligations under the 1980 deed. Here again the defendant's submission prima facie appears to me to have some real substance. 73 My first impression in relation to the interlocutory application was that at the level of balance of convenience, a continuance of the connection between, on the one hand the Logies' logo and the words " Home of the Logies " and on the other hand, the TV Week magazine, would likely determine the issue, for the simple reason that that connection had been the case for very many years up to this point in time and that the detriment to the plaintiff, if the injunctions were to be ordered but such order be overturned at final hearing, would likely upon a full examination of all the facts, matters and relevant circumstances, outweigh the detriment to the second defendant if the injunctions be now refused but it be held upon final hearing that the second defendant had in fact been entitled to the injunction. 74 During the course of the argument it became clear to me that it may very well be the case, notwithstanding that this Court is extremely likely to grant expedition and to permit an early final hearing as soon as practicable, that the exigencies of a trial judge having to deliver a judgment and the clear possibilities of the appeal processes being invoked may very well lead to the interlocutory regime now being put into place continuing for a reasonably extended period. 75 If the Court were to refuse to grant the injunctive relief, there is absolutely no assurance that the relevant defendants will refrain from continuing to mobilise in the marketplace, what they claim to be their clear intellectual property rights, including of course, what they claim to be their trade mark rights; rights in respect of which they clearly have legal title. Indeed counsel for the defendants took pains at the bar table to stress this very point. 76 If the Court was to grant the injunctive relief, then certainly the benefit of the continued connection in the minds of the subscribers will, during the period until final determination of the proceedings, suffer. As against that consideration there is the consideration that if there be imposed, as a condition of the making of the order, a restraint upon the defendants, until final determination of the proceedings, from using or deploying in any fashion the trademarks or other intellectual property rights in respect of which the defendants claim to have both a legal as well as an equitable entitlement, neither party will be in a position to further blur or colour the marketplace perception or to interfere in the market place with one another's actual or perceived rights. 77 Interlocutory injunction applications such as the application presently before the Court commonly require, following the delivery of reasons by the Court, a careful examination as to the precise period for which an injunction should be granted. Notwithstanding the above comments, it seems to me that following the handing-down of these reasons it will remain appropriate to permit further submissions from both parties as to the precise period of time for which the injunction, which I propose to grant, should operate. 78 It does seem to me that the dispute, in essence and as a matter of common sense , really involves, or at least if and to the extent the plaintiff's pleading does not presently already tender these issues, will in all probability extend to embrace the issue as to which person or entity, if any, may lay claim to an exclusive entitlement to hold the Logie Awards and by what colour of legal right. That is clearly a pivotal matter falling for determination. 79 One thing is very clear. That is, that the subject areas of dispute are complex and I very strongly suspect that they must shortly be determined over a range of issues, not all of which appear to me yet to be treated with by the opposing claims to relief now pressed in these proceedings and certainly not as, it seems to me, yet fully comprehended by the complex of facts, matters and circumstances leading to the instant application for injunctive relief. 80 Ultimately, however, the application falls for determination on the narrower field of inquiry earlier identified. 81 In all of the circumstances and bearing in mind the entitlement of the Court in exercising the discretion and in considering the question of balance of convenience, as contemplated in the Eng Mee Yong and the American Cyanamid cases, to weigh as part of the twofold process, the relative apparent strength of each party's case, having carried out that exercise and having taken care to closely consider the balance of convenience, having considered each parameter and to the extent that they are interrelated, having considering both parameters together, I have reached the clear conclusion that the proper exercise of the Court's discretion is to grant the injunctive relief sought but conditionally upon the above-described restraint upon Pacific Publications. 82 I have taken into account and am of the view that there is very real substance in Pacific Publication's submission that the conduct sought to be restrained, if permitted to continue, carries a clear risk of diluting the trademarks in the sense of breaking the association between the proprietor of the trade marks and the use of the marks and the proprietor's control over that use. It seems to me that quantifying that dilution must be an extraordinarily difficult task, if at all a Court was ever able, with any real confidence, to identify a figure by way of that quantification. 83 It seems to me that one must clearly bear in mind that the parties elected to proceed through to the 24 July 2002 settlement, each content to rest upon their legal rights. It would not be a proper exercise, as it seems to me, of the discretion of the Court, to permit either party to steal a march upon the other by reference to obtaining extremely significant commercial advantages over what is likely to be a reasonably extended period where the detriment to the other is likely to be very real and where the problems of quantifying that detriment are so very real. 84 The fact is that the prospects of Pacific Publications succeeding, on my assessment, albeit at this interlocutory level, on the construction issues which have been raised are sufficiently high in this case, and in the circumstances when weighed with the balance of convenience, to warrant an exercise of the discretion in its favour by the grant of the injunctive relief. Clearly also the corollary is the case. That is to say, the prospects of the plaintiff succeeding, on my assessment, albeit at an interlocutory level, on the construction issues which have been raised, are insufficient in this case and in the circumstances when weighed in the light of all of the factors relevant to the balance of convenience exercise, to warrant an exercise of the discretion in favour of refusing the injunctive relief sought. 85 An undertaking as to damages will require to be given to the Court and has already been offered by the plaintiff as a matter of course and as a matter of the well-established procedure of the Court. The balance of convenience is simply not in favour of what might at first blush appear to have been the obvious balance in terms of a refusal of the injunctive relief. 86 Of course each party has legal rights and upon a final hearing those rights will ultimately be pervasive. 87 This is a very particular and unusual set of circumstances and case in which the very close attention indeed has required to be given to a proper application of the principles earlier set out. 88 As Meagher, Gummow and Lehane have said, what is meant by saying that the Court must take into account the balance of convenience and the question of hardship is that it must consider carefully what effects the granting of an injunction will have on both parties and, in particular, whether to grant one would cause hardship to the respondent or to refuse one would cause hardship to the applicant. And as was pointed out by Lord Diplock in American Cyanamid and repeated by McClelland J in Appleton , the object of an interlocutory injunction is to protect the applicant against injury by violation of its right for which it could not be adequately compensated in damages recoverable in the action if the uncertainty were resolved in its favour at the trial; but the applicant's need for such protection requires to be weighed against the corresponding need of the respondent to the application to be protected against injury resulting from its having been prevented from exercising its own legal rights for which it could not be adequately compensated under the applicant's undertaking in damages if the uncertainty were resolved in the respondent's favour at the trial. 89 Pacific Publications has proved that it has a serious and not a speculative case which has a real possibility of ultimate success. It has proved that it has property and other interests which will be jeopardised if no interlocutory relief were granted. It has become a matter of seeing whether in all of the circumstances of the case the Court should nonetheless exercise its discretion by giving or declining to issue an interlocutory injunction. 90 Each case falls for determination upon its own facts. The relative apparent strength of each party's case is a relevant matter in precisely the manner in which McClelland J treated with the position in Appleton . Notwithstanding the obvious significance of the period of time which will likely elapse during which ACP Magazines will not be entitled to infringe the injunctions and effectively will not be entitled to promote in TV Week that it is the home of the Logies or to use the logo of the Logie, the mere fact that such benefit of the association as will be interrupted may prove to be extremely expensive as a matter of circulation sales and in other ways does not here outweigh the counterbalancing factors earlier referred to and does not tip the balance of convenience in favour of refusing the injunctive relief. 91 Ultimately the very confused state of the rights of both parties has to a certain extent been treated within this judgment. The important point is that there are particular legal rights which have been thrown up for consideration, albeit at an interlocutory level on the application for injunction. They have been carefully considered and ultimately the decision is that it is just and convenient to grant interlocutory relief in order to protect the second defendant against injury by a violation of its rights for which it could not be adequately compensated in damages recoverable in the proceedings if the second defendant was ultimately successful. 92 One of the second defendant's obvious rights is to the benefit, in a commercial sense, of being in a position to utilise its property in many ways, including of course to seek to negotiate in relation to those rights, where those rights are not, whether by curial process or otherwise, perceived to be eroded or hampered. Whilst the plaintiff's conduct continues the inherent value of those defendants' rights are eroded. 93 To allow a continuance of the plaintiff's conduct now sought to be restrained would in all of the circumstances be an incorrect exercise of the Court's discretion in the administration of justice. 94 There are many parameters which the continuance of the plaintiff's conduct would involve. Its prima facie case is insufficiently strong and the second defendant's prima facie case is correlatively sufficiently strong to justify, at least at the interlocutory level, the exercise of the Court's discretion in favour of the making of the injunctive orders sought. 95 Ultimately, and although this is not in any sense determinative of the subject application, the parties will be in a position in which, by failing to have worked through these issues before the settlement, they may have expected to have been in following settlement. The so-called " accident waiting to happen ", which appears to have been in all likelihood clearly recognised by both parties, having now happened, neither party will be entitled to lay claim to the disputed rights until determination by curial process following the injunctive regime to be determined by curial process of those rights. 96 This Court will expedite the hearing upon appropriate application to the extent practicable, depending upon the Court's list, and it is to be hoped that the several levels in the event of appeals of curial process can be mobilised reasonably swiftly for very obvious reasons. I certify that paragraphs 1 - 96 are a true copy of the reasons for judgment herein of the Hon. Justice Einstein given on Thursday 1 August 2002 ex tempore and revised 14 August 2002 ___________________ Susan Piggott Associate 14 August 2002 Noting of undertakings and making of orders Upon the cross claimant Pacific Publications Pty Ltd giving to the Court the usual undertaking as to damages and upon the cross claimant Pacific Publications Pty Limited undertaking to the Court that pending the determination of these proceedings or further order it will not by itself, its servants or agents or otherwise: (a) assign, transfer, mortgage, encumber, license or transfer ownership interest in the following trade marks: (i) Trade Mark No. 520303 in Class 16; (ii) Trade Mark No. 520304 in Class 41; (iii) Trade Mark No. 520305 in Class 16; (iv) Trade Mark No. 520306 in Class 41. (hereinafter called "the Trade Marks") (b) advertise distribute offer for sale or sell any magazine containing any statement that is " the Home of Logies" with or without the device which is the subject of registered Trade Mark numbers 520303 and 520304; (c) use 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 ss.7(4) and 7(5) of the Trade Marks Act 1995 in relation to the classes of goods and service in respect of which any of the Trade Marks is registered. I make the following orders: 1. 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. 2. 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. 3. that the costs of the application for interlocutory relief shall be costs in the proceedings. Last Modified: 09/03/2002 DISCLAIMER - Every effort has been made to comply with suppression orders or statutory provisions prohibiting publication that may apply to this judgment or decision. The onus remains on any person using material in the judgment or decision to ensure that the intended use of that material does not breach any such order or provision. Further enquiries may be directed to the Registry of the Court or Tribunal in which it was generated.