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Supreme Court of New South Wales |
Last Updated: 6 September 2002
NEW SOUTH WALES SUPREME COURT
CITATION: ACP Magazines Pty Limited v
Southdown Publications Pty Limited & Ors [2002] NSWSC 715
CURRENT JURISDICTION:
FILE NUMBER(S):
50130/02
HEARING DATE{S): 31/7/02
JUDGMENT DATE:
01/08/2002
PARTIES:
ACP Magazines Pty Limited (plaintiff and
respondent on the motion)
Southdown Publications Pty Limited (first
defendant)
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
LOWER COURT JURISDICTION: Not Applicable
LOWER COURT FILE
NUMBER(S): Not Applicable
LOWER COURT JUDICIAL OFFICER: Not
Applicable
COUNSEL:
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)
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
ACTS CITED:
Business Names Act, 1962 (NSW)
Supreme Court Act 1970
Trade Marks Act 1955 (Cth)
Trade Marks Act 1953
(New Zealand)
Trade Marks Act 1995 (Cth)
Trade Practices Act 1974
(Cth)
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.
JUDGMENT:
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 “Rights” 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] HCA 41; (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] HCA 1; (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] VicRp 3; (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 in 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
“the Rights”, apparently a composite description of the
anterior ACP rights and the News rights but now merged in “the
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 UPDATED: 02/09/2002
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