Re Paula Brock, Alison Lewis, Diana Hancock, Investigator Press Pty Limited v the Terrace Times Pty Limited [1982] FCA 10; (1982) 56 FLR 464 (10 February 1982)

FEDERAL COURT OF AUSTRALIA

Re: PAULA BROCK, ALISON LEWIS, DIANA HANCOCK, INVESTIGATOR PRESS PTY.
LIMITED
And: THE TERRACE TIMES PTY. LIMITED [1982] FCA 10; (1982) 56 FLR 464
No. G83 of 1981
Trade Practices

COURT

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Bowen C.J.(1), Franki(1) and Davies(2) JJ.

CATCHWORDS

Trade Practices _ Consumer protection _ misleading or deceptive conduct _ whether publication and sale of book of certain dimensions and alleged get-up deceptive

Trade Practices Act 1974, s.52

Trade Practices - Consumer protection - Misleading or deceptive conduct - Publication of cookbook with particular dimension and get-up - Similarity to existing range of cookbooks - Whether clear that books came from different sources - Trade Practices Act 1974 (Cth), s. 52. The appellants had been restrained from, inter alia, publishing or selling a cookbook entitled Heritage Recipes, Book One, Historic Eating Houses of Adelaide because the trial judge found that that conduct breached s. 52 of the Trade Practices Act 1974, as members of the public had been or were likely to be misled or deceived into accepting that the book was produced by the respondent. The respondent produced a series of cookbooks known as the Terrace Times series which were similar in shape, size and thickness to the appellants' book and similar in that they contained a mixture of recipes, drawings, history and nostalgia.

On appeal,

Held: Per Bowen C.J. and Franki J., Davies J. dissenting - (1) The respondent had to establish some features of its cookbooks which have acquired a secondary significance as indicating to the appropriate class of purchasers that the appellants' books were its books.

Weitmann v. Katies Ltd. (1977), 29 FLR 336, applied.

(2) There was no evidence that the shape, size and thickness of the Terrace Times cookbooks had become distinctive in Australia or in any State thereof.

(3) It was for the court to decide whether conduct was misleading or deceptive or was likely to mislead or deceive.

Snoid v. Handley [1981] FCA 180; (1981), 54 FLR 202, referred to.

(4) The evidence at its highest only showed that some people might initially wonder whether there was any connexion between the books, but once the books were examined it would be clear that there was not.

(5) As the case depended on inferences to be drawn from facts not seriously in dispute in the appeal, the court was not prevented from interfering with the trial judge's conclusions.

(6) Appeal allowed.

Per Davies J. dissenting - The subject matter of the books, their size, shape and get-up were so unusual and so similar as between themselves that some purchasers who knew the Terrace Times books would be likely to be misled or deceived into purchasing the Heritage Recipes book in the belief that it was a production of the persons or company responsible for the former book.

HEARING

Sydney, 1981, October 30; 1982, February 10. 10:2:1982
APPEAL.

Appeal from a judgment of a single judge of the Federal Court of Australia in respect of an injunction granted under the Trade Practices Act 1974.

B. A. Beaumont Q.C. and K. Taylor, for the appellants.

R. P. Meagher Q.C. and G. Downes, for the respondent.

Cur. adv. vult.

Solicitors for the appellants: Sly & Russell.

Solicitors for the respondent: Gilbert M. Johnstone & Co.
T. J. GINNANE

ORDER

THE COURT ORDERS THAT :

(1) The appeal be allowed;

(2) The orders of the trial Judge of 25 June 1981 be set aside;

(3) The respondent pay to the appellants their costs of this appeal

and of the proceedings below.

Orders accordingly.

DECISION

This is an appeal from a decision of a Judge of this Court wherein his Honour found that the publication and sale of a certain book infringed the provisions of s.52 of the Trade Practices Act 1974 which reads, inter alia,

'52.(1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.'

His Honour ordered, inter alia,

'1. The respondents, Paula Brock, Alison Bothwell Lewis, Diana Hancock, Investigator Press Pty. Limited, and each of them by themselves and their servants and agents be restrained from printing, publishing, distributing, selling, offering for sale, promoting, displaying or advertising a book entitled 'Heritage Recipes, Book One, Historic Eating Houses of Adelaide' by Paula Brock, Diana Hancock and Alison Lewis.'

The misleading and deceptive conduct was said by his Honour to arise from the similarity between the book 'Heritage Recipes' produced by the appellants and a series of books each entitled "The Terrace Times Cookbook" produced by the respondent. His Honour said, 'My first impression was that the applicant's and respondents' books were strikingly similar.' Similarity of product will not necessarily result in deception. In commerce, many articles are similar, even strikingly similar. In Hornsby Building Information Centre Pty Limited v Sydney Building Information Centre Limited [1978] HCA 11; (1978) 140 CLR 216, Stephen J pointed out that s.52 is not designed to preclude the fair use of features which are not special to one trader. At pages 229-230 his Honour said,

'In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor's trade name will render the latter immune from action (Office Cleaning Services Ltd. v Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39 at p.42, per Lord Simonds). As his Lordship said ((1946) 63 RPC at p.43), the possibility of blunders by members of the public will always be present when names consist of descriptive words _ 'So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.' The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.

If this be so in the case of passing off actions the case of s.52(1), concerned only with the interests of third parties, is a fortiori. To allow this section of the Trade Practices Act to be used as an instrument for the creation of any monopoly in descriptive names would be to mock the manifest intent of the legislation. Given that a name is no more than merely descriptive of a particular type of business, its use by others who carry on that same type of business does not deceive or mislead as to the nature of the business described. Thus both the Hornsby and the Sydney Centres are building information centres and no one is being deceived as to the nature of the service which is available there. Any deception which does arise stems not so much from the Hornsby Centre's use of the descriptive words as from the fact that the Sydney Centre initially chose descriptive words as its title and for many years thereafter was the only centre in Sydney which answered the description which those words provide. In consequence members of the public have come to associate its particular business with that type of activity. Evidence of confusion in the minds of members of the public is not evidence that the use of the Hornsby Centre's name is itself misleading or deceptive but rather that its intrusion into the field originally occupied exclusively by the Sydney Centre has, naturally enough, caused a degree of confusion in the public mind. This is not, however, anything at which s.52(1) is directed."

Nevertheless, there may be features of an article which, by virtue of either uniqueness or advertising, so identify the goods of a particular manufacturer or distributor that the use by another of those features will mislead or deceive the public unless the goods are otherwise adequately distinguished. As was said by Stephen J in the Hornsby Building Information Centre case at p.227-8,

'In determining the meaning of 'misleading or deceptive' in s.52(1) and in applying it to particular circumstances the law which has developed around the tort of passing off, founded as that tort is upon the protection of the plaintiff's intangible property rights, may not always provide any safe guide. However, the long experience of the courts in that field should not be disregarded, some principles which have been developed appear equally applicable to s.52(1). One of these bears upon the circumstance that what the Hornsby Centre has done is, in a sense, no more than to use its own corporate name in association with its activities. No doubt the meaning of the statutory prohibition which s.52(1) enunciates must be gained from the terms of the sub-section itself; but nothing in those terms suggests that a statement made which is literally true, ie, that the centre at Hornsby is conducted by Hornsby Building Information Centre Pty. Ltd. may not at the same time be misleading and deceptive. It clearly may be. To announce an opera as one in which a named and famous prima donna will appear and then to produce an unknown young lady bearing by chance that name will clearly be to mislead and deceive. The announcement would be literally true but none the less deceptive, and this because it conveyed to others something more than the literal meaning which the words spelled out. Thus, in passing off, a newly incorporated defendant company may not use, in its newly established business, its true corporate name if it be deceptively similar to that of a plaintiff with an established reputation (Fine Cotton Spinners and Doublers' Association Ltd. v Harwood Cash & Co. Ltd. (1907) 2 Ch 184, at p.190). What has been said of passing off actions applies equally in the present case; as Buckley LJ remarked in John Brinsmead & Sons Ltd. v Brinsmead ((1913) 30 RPC 493 at p.506), a statement which is literally true and accurate may nevertheless carry with it a false representation. Lord Morris expressed much the same notion in Parker-Knoll Ltd. v Knoll International Ltd. ((1962) RPC 265 at p.279). The same will apply in relation to s.52(1).'

Thus, in approaching this case, it is first necessary to ascertain whether there were features of the respondent's books which, if not distinguished, would associate books having those features with the respondent because those features were identified in the minds of readers with the respondent.

On this aspect, his Honour found in favour of the respondent. His Honour said,

'I find that before March 1980 the applicant's books were well-known and with an established reputation in Australia associated with the applicant recognised by persons interested in cooking or recipe books."

His Honour did not expressly say that he had formed the view that the respondent's books were of a special nature. His Honour described the books in these terms :

'All the books have a consistent design and layout and the same size and elongated shape. They contain 64 pages of recipes with drawings and notes of historical interest; the exception being 'Looking at Cooking' which is fractionally larger in size and is 80 pages of recipes without historical content.'

However, the evidence shows that the size and the shape of the books was exceptional in Australia. As Mrs. H.F. Arbib said in an affidavit in evidence, at page 40 of the Appeal Book :

'As far as I am aware the size and shape of the Terrace Times Series of Cook Books was unique in Australia until the publication of the Heritage Recipes Cook Book.'

Mr. J.S. Campbell, a bookseller, said in evidence at page 112 of the transcript, 'They are unusual. That particular book is an uunusual size and shape. They are unusual.' Other evidence was to the same effect. In content the books contain recipes and notes on buildings and other matters of historical interest and a substantial number of fine line drawings. The production is artistic so that the books presumably find a market not only among persons seeking recipes but also among persons who have an interest in drawings and descriptions of interesting buildings and places. Mr. J.M. Reed, a director of two book publishing companies, said of the respondent's books :

'I find them a very unusual cook book. ... Having had a recent batch, I have had occasion to read a number of cookery books and these particular ones I find very unusual. ... They are very personal cook books that reflect the personality and an attitude and way of life, if you like, often as it relates to cookery.'

Asked to describe the particular characteristics of the books, he said,

'It is perhaps not a word that lawyers use, but we in the publishing would call in something akin to nostalgia. It has an ambience, something in the books that reflects a way of life. There is a bit of the past in it and things like that. I am not saying that very well, but nostalgia is the way of summing it up.'

The evidence on this aspect of special characteristics of the respondent's books is, undoubtedly, sparse. It is true that in McWilliam's Wines Pty. Ltd. v McDonald's System of Australia Pty. Ltd,, 6 TPC 480, Smithers J said, at p.485,

'In this connection it is to be observed that it is for the court iself to determine whether there is a likelihood that the relevant persons will be misled, and, in the words of Lord Morris in Parker-Knoll Ltd. v Knoll International Ltd. (1962) RPC 265 at 279 : 'In arriving at a decision the court must not surrender in favour of any witness its own independent judgment.' There is ample authority for the proposition that it is for the court objectively to determine whether the conduct is likely to mislead. If anything, authority is somewhat sparse for the view that evidence of members of the public has any relevance at all. Reference may be made to two passages from Halsbury 3rd ed, vol 38, the first at p 589 dealing with comparison between trade marks, namely :-

'Whether or not any degree of resemblance likely to deceive or cause confusion exists, is a question of fact for the tribunal or court to decide upon the evidence in each case and is not a matter for witnesses.

What degree of resemblance is likely to deceive or cause confusion in any instance is incapable of definition a priori and the observations of judges upon other and quite different facts are usually of little help.'

The second, at p 639, para 1051, omitting the first sentence is as follows 'It is for the court to decide, in an action for infringement or for passing off, whether the similarity of the name or get-up complained of to that employed by the plaintiff is such as to be calculated to deceive, and it is therefore not proper for witnesses to be asked whether in their opinion this is the case.' Reference may be made also to the balance of that paragraph and the succeeding paragraph.

Reference may be made also to the dicta of Lord Diplock in General Electric Co. (of USA) v General Electric Co. Ltd. (1972) 1 WLR 729 at 738; Wrottesley J in Concentrated Foods Ltd. v Champ (1944) KB 342 at 350; and Lord Macnaghten in Payton & Co. Ltd. v Snelling, Lampard & Co. Ltd. (1901) AC 308 at 311.

In my opinion evidence of members of the public that they have been misled, if it does actually go so far as that, is not conclusive of the question for determination but merely of peripheral value. The court must make up its own mind, and it is easier for the court, particularly in my opinion, in the circumstances of this matter to make an objective determination."

But his Honour was not there intending to indicate that relevant evidence from members of the public and others as to the reputation of an article or name or special features existing in an article or name would not be both relevant and helpful to inform the court of material facts.

In the present case, there was no evidence from any purchaser of the respondent's books or from any retailer of the respondent's book as to the reputation of either the respondent or of its books or of features in the books which members of the public might think were special to books of the respondent. Nevertheless, there is evidence of reputation for the evidence is that the books have been produced in an on-going series, one a year, and that over 250,000 books have been sold since 1975. An examination of the books shows that they are similar in nature and yet each of the books has had numerous printings. Thus, there is an on-going demand for the books whch is not satisfied just by the publishing each year of a new book in the series. From this an inference may be drawn that amongst at least a coterie of persons the books have a reputation and are regarded as something special. And when it comes to matters such as books, the court is entitled to act upon some general knowledge of books in Australia. I think it proper to put some weight upon my own examination of the books and to conclude therefrom that they appear to be unusual and distinctive.

In the course of the trial before his Honour, counsel for the present appellants sought to challenge the evidence which suggested that the respondent's books were special and submitted that the evidence had not established that they were. Nevertheless, no evidence was called to contradict such of the evidence as was called on behalf of the respondent on this aspect of the matter. Indeed, the evidence adduced on behalf of the appellants tended to confirm the respondent's evidence. Mrs. A.B. Lewis, the author of 'Heritage Recipes' and one of the persons responsible for its production, said, in an affidavit, 'For some time I have been aware of the existence of the series of books entitled 'The Terrace Times'.' She said that she had offered her drawings to Mrs. Arbib, who is the person principally responsible for the production of the respondent's books, and after rejection of her drawings by Mrs. Arbib,

'I went to see Barbara Deverson, a publisher in Adelaide. ... I took my drawings, together with copies of 'The Terrace Times'. I said to her in words to the effect, 'We want to publish something similar to this locally'.'

Accordingly, an inference may be drawn that Mrs. Lewis saw something special in the books which she could best demonstrate by taking two of the books to her prospective publisher.

In Mrs. Lewis' oral evidence, when asked why she took the Terrace Times' cook book to her publisher, she said, 'Because we were inspired by its concept'. She said that 'The Terrace Times' had a very good format, that the shape was charming and that she and her colleagues were looking to the same market. I think the proper inference from this is that there were unusual and successful features about 'The Terrace Times' cook book which encouraged or to use Mrs. Lewis' word 'inspired' the appellants to produce something similar.

In the result, therefore, I think that the proper conclusion is that the respondent's works are not just recipe or cookery books but are works having a degree of artistic merit and artistic individuality. Part of that individuality arises from the size and shape of the books and from their glossy hard covers which, so far as the first of the respondent's cook books are concerned, the Paddington edition which has had twelve printings, has lacework printed at the top and foot of the front cover and in the centre a fine line drawing of old buildings with considerable lacework and like detail. On the back cover is a smaller fine line drawing, again contained in an oval though a smaller one. The names of the author and illustrator are stated on the cover but not prominently. The other books do not have an oval on the front cover, but nevertheless they do have a drawing on the front and back covers, in each case enclosed within a geometric shape. Lace at the top and bottom of the front cover is a feature.

When the appellants' book 'Heritage Recipes' was published, there were many similarities between it and the respondent's books. The contents comprised recipes, history and descriptions of buildings and places. Nostalgia associated with old places and good food abounded. The book was of precisely the same shape and size as the respondent's works. The cover was a hard glossy cover with a printing of lacework at the top and bottom. In the centre of the cover was a drawing of a fine old rotunda with a good deal of lacework on it. The names of the authors and illustrator were printed, but not prominently, the words 'Book One' appeared to indicate that this was the first of a series. On the back of the cover was a drawing, again within an oval. Finally, although the name of the publisher 'Investigator' appeared in very small letters on the spine of the book, there is no evidence to suggest that this name is particularly significant to the purchasing public or that that word would have a significant impact.

His Honour concluded that :

'By reason of the striking similarity of respondents' book to those of the applicant, the respondents have, in combination, in trade or commerce engaged in conduct that is misleading or deceptive or is likely to mislead or deceive, in that e.g. members of the public have been and are likely to be misled or deceived into accepting that the respondents' book is one produced by applicant, or part of its series; or that the books came from the same source; or were produced by the same persons.'

The evidence as to actual deception is weak. Mrs. Mendelson said that on seeing 'Heritage Recipes' she was a little puzzled but that she then looked closely at the front cover and noticed that the book was written and illustrated by Paula Brock, Diana Hancock and Alison Lewis. Mrs. Egerton said,

'I picked up the Heritage recipe book which from external appearances appeared to me to be one of the Terrace Times series. ... Knowing the Terrace Times series well, as I have illustrated for it, I was puzzled that I had not heard that a Terrace Times Adelaide cook book had been published.

I therefore looked at the front inside pages of the book to see who produced and published it and only then did I realise that it was not a Terrace Times cook book.'

Both of these deponents knew Mrs. Arbib well and, although they were puzzled when they first saw the book, they were not deceived to the extent that they purchased the book believing it to be a Terrace Times cook book.

Mrs. Thevenet deposed that in the course of making a trap purchase, 'I said to a shop assistant, indicating the Heritage receiptes (sic) cook book 'this book about Adelaide, is it published by the same people as the Terrace Times cook book?' He replied 'yes'. I said 'oh really]', he replied 'yes'.' This evidence is of little value because it does not indicate whether the shop assistant was himself misled by the similarity between the books or whether he was himself being deliberately deceptive. Mrs. Thevenet was not deceived for she knew the differences before she entered the book shop.

Mrs. Dawkins, a friend and neighbour of Mrs. Egerton, who presumably knew that Mrs. Egerton had illustrated for 'The Terrace Times' cook book, said that she saw the 'Heritage Recipes' book in a book shop and, 'Being familiar with the Terrace Times cook book series, I thought that the Heritage Recipe Book was a new addition to the series. I picked it up and leafed through it but decided not to purchase it at that stage although I believed it was a Terrace Times Cook Book or very similar to the series.'

This evidence is indeed weak on the aspect of actual deception. However, on the whole of the evidence and after examining the books, I am led to the conclusion that the subject matter of the books, their size, shape and get-up are so unusual and so similar as between themselves that some purchasers, who knew 'The Terrace Times' books, would be likely to be misled or deceived into purchasing the 'Heritage Recipes' book in the belief that it was a production of the persons or company responsible for the production of 'The Terrace Times' cook books. I would emphasize that not only is the overall get-up similar, but the names of the authors and illustrators and of the publishers are not significantly displayed. The nature of the contents, the size and shape of the books and the get-up, particularly the get-up of the cover, predominate over the names of the publishers, the authors and illustrators. Although these books have an artistic content, the names of the authors, illustrators and publishers would not have the same impact as would the name of the artist responsible for a valuable painting or sculpture.

I am therefore of the view that his Honour's conclusions were correct. In particular I think that his Honour directed himself to the correct question, not whether the 'Heritage Recipes' book was one of 'The Terrace Times' cook book series, but rather whether members of the public would be likely to be misled or deceived into accepting the appellants' book as one produced by the respondent or into believing that the books came from the same source or were produced by the same persons. I think that it is likely that some persons would be misled. Of course, a careful examination would show a difference between the works. 'The Terrace Times' cook books have a unity about them from their fine line drawings to their printing and overall set up which is not exactly repeated in 'Heritage Recipes' which varies from fine line drawings to wash drawing and from sepia to black and white. But that does not, I think, destroy the conclusion that a person might purchase the 'Heritage Recipes' book in the mistaken belief that it was a book put out by the publishers of 'The Terrace Times' cook books. If the purchaser wished to acquire another book from the same artistic source or recipes from the same selector, the purchaser would then be disappointed. Some purchasers would no doubt prefer the slightly different style of the 'Heritage Recipes' book to that of 'The Terrace Times' books. But the point is not whether there are different styles or which is to be preferred but rather whether a person might purchase one book thinking it to be from the same publishers and to have the same style as the other. A purchaser so purchasing would be misled and deceived. In my opinion, the similarity between the works is so similar that it is likely that some purchasers would be so misled or deceived unless a step were taken clearly to distinguish the appellants' work from the respondent's books.

In the circumstances, I would dismiss the substance of the appeal. However, his Honour's order restrains the publishing etc of '...a book entitled 'Heritage Recipes, Book One, Historic Eating Houses of Adelaide' by Paula Brock, Diana Hancock and Alison Lewis.' What must be restrained is misleading or deceptive conduct. It may be possible to publish the substance of the book 'Heritage Recipes' in such a manner as not to mislead or deceive. As to whether it is possible to do so I express no opinion. But the injunction should not restrain anything which is not deceptive or misleading or likely to be so. I would therefore rephrase the injunction as follows :

'The respondents, Paula Brock, Alison Bothwell Lewis, Diana Hancock, Investigator Press Pty. Limited, and each of them by themselves and their servants and agents be restrained from printing, publishing, distributing, selling, offering for sale, promoting, displaying or advertising the book entitled 'Heritage Recipes, Book One, Historic Eating Houses of Adelaide' by Paula Brock, Diana Hancock and Alison Lewis in such manner that members of the public may be deceived or misled into believing that the book is one produced by the respondent or that it and the respondent's Terrace Times cook books come from the same source or are produced by the same organisation.'