|
|
[Home]
[Databases]
[WorldLII]
[Search]
[Feedback]
Federal Court of Australia - Full Court Decisions |
Last Updated: 10 August 2004
FEDERAL COURT OF AUSTRALIA
Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd
TRADE MARKS – Claim of infringement of trade mark
– Parties were publishers of rival Chinese language newspapers –
Respondent’s
Chinese title was registered as a trade mark –
Respondent’s Chinese title consisted of four characters handwritten in
the
Li Shu style of calligraphy – Applicants’ Chinese title used
three of the same characters in computer generated Li Shu calligraphy
– Whether primary judge erred in determining that the applicants’
title was deceptively similar to respondent’s
title – Significance
of difference in meaning of titles caused by differing third characters –
Whether non-descriptive
words should be emphasised in considering deceptive
similarity – Significance of difference between handwritten and computer
generated calligraphy – Relevance of evidence of buyer confusion –
Cause of buyer confusion – Whether evidence
of buyer confusion was hearsay
evidence.
COPYRIGHT – Whether primary judge correctly
assessed respondent’s claim of substantial reproduction of its
Chinese title.
Trade Marks Act 1995 (Cth) ss 6, 10,
17, 120
Copyright Act 1968 (Cth) s
14
MELBOURNE
CHINESE PRESS PTY LTD & CHINESE TIMES NEWSPAPER PTY LTD v AUSTRALIAN CHINESE
NEWSPAPERS PTY LTD
N 2265 OF 2003
WILCOX,
KIEFEL AND BENNETT JJ
10 AUGUST 2004
SYDNEY
ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA
|
BETWEEN:
|
MELBOURNE CHINESE PRESS PTY LTD
(ACN 072 037 168) FIRST APPLICANT CHINESE TIMES NEWSPAPER PTY LTD (ACN 054 649 857) SECOND APPLICANT |
|
AND:
|
AUSTRALIAN CHINESE NEWSPAPERS PTY LTD
(ACN 003 156 116) RESPONDENT |
|
DATE OF ORDER:
|
10 AUGUST 2004
|
|
WHERE MADE:
|
THE COURT ORDERS THAT:
1. The application for leave to appeal be allowed.
2. The appeal be dismissed with costs.
Note: Settlement and entry of
orders is dealt with in Order 36 of the Federal Court Rules.
ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA
|
AND:
|
REASONS FOR JUDGMENT OF THE COURT
Leave to appeal
1 The applicants, Melbourne Chinese Press Pty Ltd and Chinese Times Newspaper Pty Ltd (collectively ‘MCP’), seek leave to appeal from a decision of a judge of the Court (Conti J) in a suit alleging infringement by them of a trade mark and copyright owned by the respondent, Australian Chinese Newspapers Pty Ltd (‘ACN’). Leave is necessary because, prior to trial, the issues of liability for infringement of trade mark and copyright were separated from issues of quantum. So far, his Honour has determined only the issues relating to liability; no final order has yet been made. ACN does not oppose the grant of leave to appeal. It is appropriate to grant leave. We shall do so and proceed to consider the appeal, the merits of which have been fully argued before us by counsel.
Background to the appeal
(i) The newspapers
2 The parties are publishers of rival newspapers sold in Australia. Both newspapers are written substantially in Chinese characters. Each bears both an English title and a Chinese title. In neither case is the English title a direct translation of the Chinese title.
3 MCP’s newspaper bears the English title ‘The Daily Chinese Herald’. No complaint was made by ACN as to this title. However, the primary judge accepted ACN’s submission that the Chinese title infringed ACN’s trade mark and copyright.
(ii) The registered trade mark
4 ACN is the registered owner of Trade Mark No. 776305 (‘the Trade Mark’) which has a priority date of 22 October 1998. The certificate of registration shows that the Trade Mark was registered under s 41(5) of the Trade Marks Act 1995 (Cth) (‘the Act’) and consists of four Chinese characters in the Li Shu style of calligraphy. The Trade Mark was created for the respondent by Professor Huang in his own handwriting within the Li Shu style of calligraphy.
5 The certificate of registration notes that the characters may be transliterated as ‘Oh Chow Sun Pao’, which may be translated into English as ‘Australian New Report’. The evidence before the primary judge was to the effect that the four Chinese characters of the Trade Mark, when spoken in Cantonese, are pronounced ‘O Chau Sun Pao’ and translate into English as ‘Australian New Newspaper’ as follows:
(a) the first two characters representing ‘O Chau’ mean
‘Australian’;
(b) the character for
‘Sun’ means ‘New’; and
(c) the character for ‘Pao’ means ‘Newspaper’ or ‘New’.
6 Nothing turns on the minor difference between this translation and the one appearing in the certificate of registration. The English title of ACN’s newspaper is different again; it is ‘Australian Chinese Daily’. However, as we have said, there is no contest about the English titles. They seem to be used for the benefit of English speakers such as advertisers. The English titles do not represent translations of the Chinese characters. We are concerned only with the Chinese characters.
(iii) MCP’s masthead
7 MCP’s Chinese title also consists of four Chinese characters. They are pronounced ‘O Chau Yat Pao’ and in English mean ‘Australian Daily Newspaper’, where:
(a) ‘O Chau’ means
‘Australian’;
(b) ‘Yat’ means
‘Daily’; and
(c) ‘Pao’ means ‘Newspaper’ or ‘New’.
8 From the date of its first publication until 1 November 1997, MCP’s newspaper bore a different Chinese title. MCP adopted the present title as from 1 November 1997, by which time ACN’s newspaper had borne its present Chinese title for nearly three years. However, at that stage, ACN made no complaint against MCP. ACN complained only after 23 September 2000, on which date MCP altered its masthead by changing the masthead’s font, or style of Chinese calligraphy, from the Xing-Shu or Hsing-Shu style (‘the prior masthead’) to the Li Shu style (‘the logo’).
9 ACN has never asserted that the prior masthead, in use from 1 November 1997 until 23 September 2000, was an infringement of the Trade Mark or an infringement of its copyright.
The trade mark case
(i) The applicable legislation and principles
10 Section 120(1) of the Act provides:
‘A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.’
11 Section 10 of the Act provides:
‘For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.’
12 Section 17 of the Act defines a trade mark as follows:
‘A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.’
13 Section 6 of the Act defines a sign as follows:
‘sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.’
14 In the present case, the Trade Mark is a sign that consists of four Chinese characters written in a particular style.
15 The primary judge determined the issue of infringement by reference only to the question of deceptive similarity. ACN had not contended that the logo was substantially identical with the Trade Mark.
16 The principles to be applied in a trade mark case in a determination of deceptive similarity are not in dispute in this appeal and were not in dispute before the primary judge. The marks are not to be compared side by side, as the question is one of impression based on recollection of the mark (Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1961] HCA 75; (1963) 109 CLR 407 (‘Shell’) at 415). The method of comparison was set out by Parker J in Re Application by Pianotist Co Ltd (1906) 23 RPC 774 (‘Pianotist’) at 777:
‘You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.’
17 Dixon and McTiernan JJ also discussed this comparative method in Australian Woollen Mills Ltd v F.S. Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641 (‘Woollen Mills’) at 658:
‘In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.’
18 Further, the marks must be considered in their entirety:
‘One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes’ (Clark v Sharp (1898) 15 RPC 141 at 146).
19 A judgment about deceptive similarity is generally a matter of first impression, rather than meticulous comparison. Allowance must be made for imperfect recollection (Aristoc Ltd v Rysta Ltd (1944) 1B IPR 467 at 472). This applies as much to a visual comparison as it does when the sounds of two words are being compared. While it is not necessary to prove actual deception, a mere possibility of confusion is not sufficient (Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592 (‘Southern Cross’)); there must be a real, tangible danger of confusion occurring (Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365).
20 It follows that, when comparing the two marks for the purpose of considering whether they are deceptively similar, the relevant consideration is the likely effect or impression produced on and retained by customers and potential customers.
21 As noted in Pianotist and Woollen Mills, similarities of look, sound and meaning are relevant. Also, as noted in Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901; (2003) 59 IPR 318 at 331:
‘The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them and a proprietor of a mark is not entitled to a complete monopoly of all words conveying the same idea as that mark: [Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; (1952) 86 CLR 536] Cooper Engineering at 539. This fact can, however, be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive: Cooper Engineering at 539. The presence of a common idea may be a determining factor because the idea is more likely to be recalled that [sic] the precise details of the mark (Jafferjee v Scarlett [1937] HCA 36; (1937) 57 CLR 115 at 121-2 (Jafferjee)) but the suggestion of differing ideas may serve to reduce the risk of confusion (Johnson & Johnson v Kalnin [1993] FCA 210; (1993) 114 ALR 215; 26 IPR 435 at 440 (Johnson & Johnson)). The idea that is relevant is the idea that the mark will naturally suggest to the mind of one who sees it: Jafferjee at 121.’
(ii) The factual findings of the primary judge
22 In considering the facts of this case, the primary judge was careful to note that the comparison to be made should not be side by side but rather, as set out in Shell at 415, an attempt to ascertain: (a) the recollected impression of the Trade Mark that persons of ordinary intelligence and memory would have; and (b) on the other hand, the recollected impression that such persons would get from the logo. He also noted that it is ‘necessary that I keep in mind ... that I am not necessarily involved in an assessment of the totality of the conduct of [MCP], in the same way as in the context of passing off proceedings’. This is important as much of MCP’s criticisms of the primary judge’s reasoning is based upon an asserted error in importing irrelevant conduct into an assessment of trade mark infringement.
23 The relevant factual findings of the primary judge were:
• both newspapers are written in traditional language, as distinct from modern ‘simplified’ language. They are both broadsheets;
• the Chinese titles of both newspapers are for the purpose of identification by Chinese readers;
• on most occasions when the respective newspapers are displayed for sale they are physically folded. Except possibly on Saturdays, they are displayed so that the whole of the logo or the Trade Mark is visible;
• buyers normally pick up a displayed newspaper from a table or bench and pay for it at the counter;
• at about the date of MCP’s masthead change, some customers accidentally purchased or chose the ‘O Chau Yat Pao’ instead of the ‘O Chau Sun Pao’;
• Chinese people in Australia would not necessarily recognise Professor Huang’s writing reflected in the Trade Mark, particularly when hastily purchasing newspapers;
• in the Chinese language, each character may have a number of meanings or connotations and the intended meaning may only be apparent from the context. Therefore, for a Chinese reader to understand the meaning of a sentence or phrase in Chinese, it is necessary for that person to consider all the characters;
• there is spoken similarity between the Trade Mark and the logo;
• the Li Shu style, the font used by the Trade Mark, is characterised by an appearance of being handwritten, having different types of strokes from other ‘font families’; and
• in adopting the logo, MCP intended ‘to deceive and confuse buyers and prospective buyers of [ACN’s] newspaper with a view to attracting their patronage, as a consequence of an initial mistaken or unintended purchase at the counter’.
24 Both parties adduced evidence relating to the question of how the Trade Mark and the logo would be perceived and understood by readers of the Chinese language.
(iii) Reasoning of the primary judge
25 At [120], Conti J stated eight reasons, which he said were to be read cumulatively, for finding that the logo was deceptively similar to the Trade Mark. They were:
‘(i) both are of similar size and use the same red colour;
(ii) the only distinctive or distinguishing character of the respective logos is visually the third one; moreover the other three characters translate identically into Chinese as "O Chau... Pao";
(iii) both logos owe their origins and historical development to the Li Shu style of font; although there are numerous styles of Li Shu, the style adopted for [MCP’s] current logo has been matched as closely as possible to Professor Huang’s Li Shu style, even taking into account the different third character of the respective logos of the parties;
(iv) Professor Huang’s Li Shu style "combines the Li Shu in Qing Dynasty", and [MCP’s] Li Shu style is "influenced by Li Shu style in Qing Dynasty"; a synonym for "style" in that context is "typeface"; previously [MCP’s] logo was written in the Xing-Shu style;
(v) a Chinese buyer tends to look at the impact of the image of the four characters, or their whole layout, such that they come together as one image or visual experience; thus the overall characters of the two logos look similar, especially when viewed "scantily";
(vi) the "dots" appearing in [MCP’s] logo, though not the same as those of [ACN’s] logo, have the overall appearance of being in the same style, and it is the overall appearance which is looked at, rather than individual components; or as put another way, the Chinese reader "look[s] at the whole thing as one piece of graphic" and not "word by word"; particularly is that so, when the Chinese viewer is engaged in making a fleeting glance at the masthead of a newspaper in the course of purchasing the same;
(vii) most of the five strokes of both current mastheads are the same; and
(viii) the goods or services in respect of which [ACN’s] trade mark is registered (ie printed matter being goods in class 16 and advertising being services in class 35) is the same as [MCP’s].’
26 Despite item (iv), his Honour said that his summary ‘does not place any major emphasis on the issues as to Li Shu style and its various visual characterisations referrable to Dynastic periods of time’. This was particularly because ‘the actual deception of Chinese newspaper readers established by the newsagents’ evidence ... appears to have occurred in the limited context of likely hurried or inattentive buying of [MCP’s] newspaper in mistake for [ACN’s] newspaper’.
27 Upon the hearing of the appeal, there was no challenge to the findings of fact made by the primary judge, including the finding that MCP adopted the logo with the intention to deceive purchasers.
(iv) Submissions for MCP
28 Mr D K Catterns QC, who appeared for MCP with Mr S C G Burley and Mr N R Murray of counsel, conceded that the question whether the logo was deceptively similar to the Trade Mark was one of impression. However, he submitted that the primary judge fell into error by considering only the appearance of the four characters, without specifically considering their meaning. Mr Catterns emphasised the difference in meaning of the two sets of characters by reason of their different third characters. He said the primary judge treated the marks as merely logos, rather than as word marks in a language that is read and spoken by many Australians. Mr Catterns submitted that the first, second and fourth characters represent words of a descriptive nature; so the third character, being non-descriptive, should have been given more weight.
29 Counsel for MCP also argued that his Honour erred in failing to take account of differences between the styles of the two marks, in particular between the computer generated characters of the logo and the handwritten characters of the Trade Mark. The basis of the submission seems to be that his Honour looked at the fact that both sets of characters adopted the Li Shu style, but did not consider differences within that style.
30 Mr Catterns complained that, although Conti J found that consumers had been confused, he did not determine the basis of that confusion. His Honour had admitted some evidence of confusion, which Mr Catterns labelled as hearsay evidence, over the objection of counsel for MCP. This evidence was not from purchasers of the newspapers, but from newsagents who observed their behaviour and conversed with them. However, no evidence directly addressed the cause of the confusion. Accordingly, counsel submitted, any confusion may have arisen otherwise than by reason of the use of the logo as a trade mark. Mr Catterns pointed out that the Chinese titles of both newspapers were printed in red, although the registration of the Trade Mark makes no reference to colour. He argued that, if the similarity of colour was the cause of confusion or the confusion had arisen by reason of ACN’s reputation, the confusion evidence was irrelevant to the trade mark issues and should have been rejected. In any event, he said, the evidence does not establish confusion caused by similarity between the logo and the Trade Mark.
31 The applicants’ assertion as to error really focuses on two matters:
(i) the difference between the two sets of characters, being the qualifying and distinctive characters ‘Sun’ in the Trade Mark and ‘Yat’ in the logo, affecting their respective appearances, sound and meaning; and
(ii) the difference between the artistic calligraphy of the Trade Mark and MCP’s computer generated logo.
32 Mr Catterns also submitted that the Chinese characters for the words ‘Australian’ and ‘Newspaper’ were descriptive words; accordingly, the different characters, ‘Sun’ and ‘Yat’, should have been emphasised for the purposes of a determination of the issue of deceptive similarity. Mr Catterns said:
‘The question of deceptive similarity is generally to be considered by reference to aspects of the mark which are not descriptive or which are capable, to the reader's eye, of distinguishing the trade mark owner's goods from others.’
He cited Cooper
Engineering, The Coca-Cola Co of Canada Ld v Pepsi-Cola Co of Canada
Ld (1942) 59 RPC 127 (‘Coca-Cola Co’) and Sports
Café Ltd v Registrar of Trade Marks (1998) 42 IPR 552
(‘Sports Café’).
33 Mr Catterns expressed his argument in an alternative way by saying that, notwithstanding that the Trade Mark was registered under s 41(5) of the Act and thereby considered by the Registrar to be capable of distinguishing ACN’s newspaper, the words that are non-descriptive are likely to dispel confusion; therefore, consideration of deceptive similarity should focus on these words.
34 Mr Catterns accepted Conti J’s finding that the reader would perceive the four characters as a visual whole but he contended that the reader would also derive meaning from the individual ‘words’ represented by the characters and would be able to distinguish them by reason of their meaning. He suggested that the primary judge failed to consider the differences between the two sets of Chinese characters. He said his Honour was not entitled to disregard two important aspects of the different third characters: the different meanings they conveyed and their different physical or visual appearances. Mr Catterns’ submission was that, if attention were paid to the different meanings of the two sets of characters, ‘Australian New Newspaper’ and ‘Australian Daily Newspaper’, nobody would be confused. He submitted there is a striking difference between ‘Daily’ and ‘New’. There is no basis in logic or law to treat foreign language marks differently to English word marks, by refusing to have regard to the meaning they convey.
35 In relation to font, counsel for MCP submitted that the findings of the primary judge do not extend to a conclusion that a purchaser of a newspaper would not recognise the handwritten logo of the Trade Mark as against the computer generated logo of the applicants. In any event, Mr Catterns said the mere use of a font cannot make an infringement from what is otherwise no infringement.
(v) Submissions for ACN
36 Mr J V Nicholas SC, who appeared with Mr M Green of counsel for ACN, supported the findings and reasoning of Conti J. He asserted that ‘the source of the deception and confusion found to have occurred following [MCP’s] adoption of its new masthead stemmed from the application by [MCP] of the distinctive calligraphy that is a feature of the [Trade Mark] to a newspaper title that had until that time been written in an entirely different style of calligraphy’. Counsel submitted:
‘The appearance of [MCP’s] newspaper title, when rendered in the style of the registered trade mark, was all important in this case because of the circumstances in which Chinese daily newspapers are usually bought and sold. In this particular trade, the purchasers do not usually proffer any verbal description of the goods which they desire to purchase and similarities of sound and meaning do not have as an important part to play as they might if the newspapers were bought and sold under different conditions cf. Australian Woollen Mills 58 CLR at 658-659.’
(vi) Consideration of submissions
37 It is clear beyond argument that the first, second and fourth characters in the Trade Mark and the logo are largely identical but that the third character is different, both in appearance, sound and meaning. In many cases, such differences are likely to be fatal to a claim of deceptive similarity. However, as it seems to us, two circumstances of the present case justify the primary judge’s conclusion.
38 First, Conti J made a finding, which has not been challenged on appeal, that a Chinese reader, particularly in the circumstances of purchasing a newspaper, looks at the four characters as a graphic, as a single entity, and not word by word. His Honour said at [120]:
‘a Chinese buyer tends to look at the impact of the image of the four characters, or their whole layout, such that they come together as one image or visual experience; thus the overall characters of the two logos look similar, especially when viewed "scantily";
...
the Chinese reader "look[s] at the whole thing as one piece of graphic" and not "word by word"; particularly is that so, when the Chinese viewer is engaged in making a fleeting glance at the masthead of a newspaper in the course of purchasing the same.’
39 This unchallenged finding of fact reduces the significance of a word for word analysis.
40 Cases like Cooper Engineering, Coca-Cola Co and Sports Café do not support the proposition of Mr Catterns that non-descriptive words should be emphasised in considering deceptive similarity. In considering marks as a whole, where they contain common words, one should look primarily to those aspects of the marks that are not common (Cooper Engineering at 538-9). Where distinctive aspects of the marks are the aspects that would remain with a consumer, that is sufficient to avoid confusion (Coca-Cola Co at 134). Elements of the mark were not discounted in these cases because they were descriptive but because they were common to the two marks. In any event, in the present case there is no real distinction between the three common words, ‘O’, ‘Chau’ and ‘Pao’, and the uncommon words ‘Sun’ and ‘Yat’. The latter two words are no less descriptive than the common three words. Conti J did not discount elements of the mark on the basis that they were descriptive or non-descriptive. He took into account all elements of the marks in determining whether one was deceptively similar to the other.
41 Mr Catterns’ submission seems to ignore the findings of fact both that the buyer looks to the impact of the four characters together and that the buyer would not give actual meaning to each of the four characters. The submission also seems to ignore the principle that the logo and the Trade Mark must be considered in their entirety, bearing in mind the points of resemblance and the points of dissimilarity, in order to judge the general effect of the whole (Clark v Sharp (1898) 15 RPC 141 at 146).
42 The situation is perhaps not dissimilar to an example used during argument: the masthead of The Sydney Morning Herald which, Mr Catterns conceded, would be looked at ‘in one go’. He accepted that many purchasers would not consider the words separately, but would recognise the composite mark, in its particular style of printing. To say this does not imply that purchasers of The Sydney Morning Herald are illiterate or disinclined to convert an image into words. It is merely to recognise that purchasers may not subdivide a composite set of words, particularly where they are in a distinctive style, but may recognise them together, as a single image, as the primary judge found in this case. It is because purchasers tend to act in this way that registration of a composite mark under the Act is often commercially important.
43 Care must be taken in evaluating evidence, given in court before the primary judge, that involved asking a witness to make a side by side comparison of the Trade Mark and the logo. Such a comparison is not determinative of deceptive similarity. While there is evidence that, in reading the four characters, a Chinese reader would note the difference in the third character and also the difference in meaning, there is also evidence, which his Honour was entitled to accept, that purchasers of the newspapers would look at the graphics as a whole, at the overall image created by the four characters, and not read the characters word by word. This is consistent with evidence that Chinese characters are, to some extent, pictorial representations of concepts. The affidavit evidence of Professor Huang, accepted by the primary judge was:
‘a Chinese reader will gain meaning from the associations and combinations of characters and their position in space on the page. Therefore, Chinese readers will not isolate the particular characters or pay any special attention to those elements, but looking [sic] for meaning in the whole when characters are presented together.’
44 There is evidence that a reader will be able to distinguish the two sets of characters but that does not mean that, in the circumstances of a purchase of a newspaper, a reader will do so. The primary judge accepted evidence that a reader would not do so. It cannot be said that Conti J failed to consider the meaning of the logo and the Trade Mark.
45 Conti J noted that the first, second and fourth characters translate identically into Chinese as ‘O Chau Pao’. Mr Catterns urged upon us that we must take into account the different meaning of the third character. He drew upon the analogy of a reader of the English words ‘Australian New Newspaper’ handwritten in an italic style and ‘Australian Daily Newspaper’ printed in a computer font which looked like handwritten italics. Counsel submitted that, in that case, there would clearly be no trade mark infringement. Bearing in mind that, to draw an accurate analogy, ‘Australian New Newspaper’ would be a registered trade mark and in a distinctive font and style, we are of the view that, in these circumstances, where the logos are viewed ‘scantily’, the two sets of English words could be deceptively similar and cause confusion. Readers of English may, in the words of the primary judge at [120], ‘look at the impact of the image of the [words], or their whole layout, such that they come together as one image or visual experience’. It is not a question of separating out what the applicants describe as ‘the non-distinctive words’ ‘Australian’ and ‘Newspaper’ to focus on the different words ‘New’ and ‘Daily’. It is a matter of fact, unchallenged, that Chinese readers will see multiple characters as a single image.
46 The second important circumstance is that the logo not only adopts characters having a strong resemblance to those of the Trade Mark, but also adopts the Li Shu style of calligraphy used in the Trade Mark. When the former Xing-Shu style was used for the same four characters in the prior masthead, the evidence was that the differences between the prior masthead and the Trade Mark were striking, even at a casual glance.
47 If it is the visual impact of the calligraphy that creates the impression on the Chinese reader, the change in fonts would be ‘crucial’ to the confusion in the minds of consumers. As Professor Huang set out in his affidavit evidence:
‘Where a particular piece of Chinese calligraphy is also used to indicate a product, such as cooking oil or soy sauce, then, for many readers, the form in which those characters are presented will be more recalled than the particular underlying Chinese characters. An experienced calligrapher can evoke a reader’s memory of that cooking oil by using a similar calligraphic style without necessarily using any of the works in the name. To me, this indicates the cultural importance to Chinese readers of calligraphy and the use of fonts.’
48 It is true that MCP’s calligraphy is computer generated, as distinct from the handwritten calligraphy used in the Trade Mark. However, although Professor Huang, the creator of the handwritten Li Shu style calligraphy used in the Trade Mark, said he could readily detect the difference between it and the computer generated calligraphy, this does not amount to evidence that consumers could or, in the circumstances of the purchase of a newspaper, would do so. The primary judge accepted evidence that Chinese readers in Australia would not necessarily make the distinction.
49 In relation to MCP’s decision to adopt the Li Shu calligraphy, in lieu of the style of calligraphy previously used by it, it is appropriate to recall the comment by Dixon and McTiernan JJ in Woollen Mills at 657:
‘But the examination made of the respondent’s motives and good faith seems to us to leave the question of infringement and passing off very much in the same position as it stood in without it. The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive. Moreover, he can blame no one but himself, even if the conclusion be mistaken that his trade mark or the get-up of his goods will confuse and mislead the public.’
50 A further matter raised by MCP is the evidence of two newsagents that was accepted by Conti J. Counsel said that the evidence was hearsay, that it was not relevant, and not persuasive. However, it is far from clear that the evidence should be regarded as hearsay evidence. The newsagents’ evidence consisted partly of their observations of customers’ behaviour, as customers picked up one newspaper and then replaced it with the other after a conversation with the newsagent. That evidence was certainly not hearsay. Each of the newsagents also recounted conversations in which customers indicated their state of mind. At common law, this evidence, also, would not have been hearsay: see the discussion in Concrete Constructions Pty Ltd v Plumbers and Gasfitters Employees’ Union (No 2) (1987) 15 FCR 64 at 81. Under the Evidence Act 1995 (Cth), the situation appears to be a little different. Such evidence would appear to fall within the definition of hearsay in s 59 of that Act, but it is the subject of a specific exclusion from the hearsay rule: see s 72.
51 In any event, we were informed by counsel that the newsagents’ evidence was admitted without objection by counsel for MCP, except as to its relevance. It is clear that the newsagents’ evidence was relevant. Evidence of actual confusion is relevant to a claim of infringement by reason of deceptive similarity; it goes to the existence of a real and tangible danger of deception or confusion (Southern Cross at 595 and 597-8).
52 In relation to the persuasiveness of the newsagents’ evidence, the assessment of the witnesses, who gave evidence translated into English of Chinese language conversations, was a matter for his Honour par excellence.
53 Mr Catterns did not challenge the factual finding that his clients had an intention to deceive but emphasised that there was no evidence or finding as to the reasons for any confusion. The finding made by his Honour at [123] was that it was the applicants’ purpose, at all material times, ‘to deceive and confuse buyers and prospective buyers of [ACN’s] newspaper with a view to attracting their patronage’ and that the intention was to an extent achieved from the time that the prior masthead was changed to the logo in September 2000. Counsel submitted that his Honour erred in failing to determine that it was the deceptive similarity of the two marks that was the cause of any confusion, rather than irrelevant considerations, such as the reputation of the respondent or the fact that both marks were red in colour. It was said that, in those circumstances, the evidence of consumers being misled was irrelevant, as they may have been misled by factors or a combination of factors not relevant to trade mark infringement.
54 We accept that a finding of intention cannot overcome an absence of deceptive similarity in an action for trade mark infringement. However, a finding of intention to deceive can have the relevance described in Woollen Mills and this is, in our opinion, the way in which the primary judge took that unchallenged finding into account.
55 It would seem to be correct that there was no direct evidence of the cause of the confusion. However, counsel for ACN point to the link between the time of actual confusion and MCP’s change from the prior masthead to the logo.
56 The primary judge made mention of a number of factors to be read cumulatively, including the fact that the two marks were of similar size and the same colour. However, the finding of actual confusion did not figure in his Honour’s reasons for concluding that the marks were deceptively similar. It was conceded by Mr Catterns that the red colour was not an innovation. Both parties had used the colour for some time, including during a period when there was no claim of infringement. His Honour made reference to that fact. He was clearly well aware that the prior masthead had been the same colour and that there was no allegation that the prior masthead infringed the Trade Mark. It is reasonable to conclude that these factors were not predominant in his reasoning and may not have amounted to more than a factor relevant to the issue of whether the logo was a badge of origin used to indicate a trade connection with MCP. It may have had relevance as part of the surrounding circumstances, to be considered with respect to the likelihood of deception or confusion, bearing in mind that the red colour had been used consistently by the parties since 1986 and 1987 respectively. The reference to the similarity in size of the respective marks may be considered the same way.
57 The primary judge also referred in his reasons to the reputation of ACN in the Trade Mark. That did not, however, figure in the specific reasons set out by his Honour for concluding that there was deceptive similarity. In context, that reference may have been to a circumstance that may have provided MCP with a reason to change the prior masthead to the logo to more closely resemble the Trade Mark.
58 It was not established that the perceived confusion of customers was for reasons other than MCP’s adoption of the logo, creating a masthead similar in appearance to that of ACN. The evidence linked the confusion to the date of MCP’s change from the prior masthead to the logo. In those circumstances, even if other factors contributed to the confusion, it cannot be said that the primary judge was in error in regarding the newsagents’ evidence as indicative of actual confusion, that confusion being generated by the adoption by MCP of the logo. That finding was, at the least, implicit in his Honour’s reasons.
(vii) Conclusion on the trade mark issue
59 The evidence establishes that purchasers of Chinese daily newspapers do not usually state the name of the newspaper which they desire to purchase; so similarities of sound and meaning do not play as important a part as they might in relation to some other goods (Woollen Mills at 658). In the context of the evidence of the circumstances of purchase, the primary judge’s emphasis upon the visual similarity of the marks (rather than the different meaning conveyed by the third character) is understandable and does not reflect error. This emphasis reflects the accepted evidence in the case. His Honour was, however, mindful of the difference in appearance, sound and meaning of the third characters.
60 We are not persuaded that Conti J erred in holding that MCP infringed the Trade Mark.
The copyright case
61 The evidence is that the applicants chose, from pre-existing computer software, a style as close as possible to the Li Shu style of Professor Huang. Mr Catterns asserts that this finding is fatal to the case of copyright infringement.
62 Copyright was claimed only in the distinctive form and style in which the words ‘O Chau Sun Pao’ were visually expressed through the calligraphy of Professor Huang. However, that claim was made against the background of substantial similarity between the characters depicted by the calligraphy. It was not suggested that the mere adoption of Li Shu calligraphy would have amounted to breach of copyright if characters that were dissimilar had been used.
63 The primary judge concluded at [126] that MCP ‘set about the adoption of a new logo of Chinese characters for the masthead of [MCP’s] newspaper, being a course of action finalised and implemented on 23 September 2000, being a logo which constituted a trade mark at least deceptively similar to [ACN’s] Registered Trade Mark No. 776305’. Having found that the masthead constituted an artistic work, his Honour said [at 127] that it became ‘conceptually difficult’ to avoid the conclusion that MCP:
‘infringed [ACN’s] copyright in that artistic work, by reason of an exercise in qualitative comparisons. [MCP] did much more, for instance, than reproduce their Chinese name, existing since 1 November 1997, in Li-Shu style, and as [ACN] has rightly submitted, it was no mere accident that [MCP] utilise[d] that style’.
His Honour said that, in view of his findings with respect to trade mark infringement, the conclusion that MCP copied a substantial part of the subject matter of ACN’s copyright, within s 14(1)(a) of the Copyright Act 1968 (Cth) (‘Copyright Act’), was ‘virtually inevitable’.
64 Counsel for MCP submitted that the primary judge was in error in two ways:
‘(a) by incorrectly merging the tests for deceptive similarity (trade mark infringement) and substantial reproduction (copyright infringement) in reaching a conclusion of copyright infringement; [and]
(b) by finding copyright infringement in the absence of a finding of copying.’
65 The submission is that his Honour did not properly assess ‘substantial reproduction’, or undertake any qualitative or quantitative analysis in examining the copyright case, but impermissibly relied on the conclusion of deceptive similarity of the two marks, which is based upon an analysis that takes account of imperfect recollection and the circumstances of the purchase.
66 Further, it was said, there could not be a finding of copying in circumstances where neither the basic form nor the order of the characters was part of the claimed work and where the applicants selected the font for the characters from a group of fonts that was commercially available in a software program. The characters were assembled in the same order as the prior masthead and were not created for the respondent in the handwritten calligraphy that was the distinctive style of the work.
67 Counsel for MCP submitted that, to choose to type four pre-existing words in the same order in a pre-existing font, even though the font was chosen to be as close as possible to the artistic work, is not to copy the work.
68 Counsel for ACN submitted:
‘(a) The fact that the characters (as opposed to the style in which they were rendered) had been used by [MCP] prior to September 2000 might explain why [MCP] adopted those characters for use in its new masthead, but that is no answer to the allegation that when creating their new masthead they copied from, directly or indirectly, [ACN’s] artistic work.
(b) Similarly, that [MCP] may have, when adopting their new masthead, used a set of type fonts forming part of the Founder Wits 3.0A Page Making program software is no answer to the allegation that in creating the new masthead in September 2000 [MCP] copied [ACN’s] artistic work.
(c) Put another way, what [MCP] did here was, with the image of [ACN’s] artistic work clearly in mind, take their existing masthead and transform it into one that would most closely resemble [ACN’s] artistic work.
(d) The causal connection was clearly established for the purposes of the copyright claim and the Primary Judge’s finding that [MCP] copied [ACN’s] artistic work was virtually inevitable in light of other findings made by his Honour.
69 After a consideration of the test to be applied in determining whether there has been copying of a substantial part of the subject matter of the copyright within s 14(1)(a) of the Copyright Act, the primary judge held at [132]:
‘The authoritative tests as to the taking or reproducing of a substantial part of the copyright have been established to my satisfaction. The inference open to be drawn is that whatever occurred as a result of the utilisation of a computer typesetting programme put in place by [MCP], [MCP] manipulated a substantial part of the artistic work the subject of [ACN’s] logo, along with other fonts which they had purchased, in order to produce [MCP’s] most recent logo. That substantial part so taken comprised in particular the essence of the first two and fourth characters of [ACN’s] logo, taken as a visual impression of a totality of that logo, and for what it may matter, taken also by reference to the aggregate of the elements or features of [ACN’s] logo. There is therefore in my opinion the requisite objective similarity. There is in my opinion a measure of objective similarity between [MCP’s] most recent logo and [ACN’s] artistic work, which has been rightly attributable by [ACN] to copying, rather than to the mere use or reflection by [MCP] of an unprotected idea or style.’
70 What that paragraph demonstrates is that his Honour undertook, as required by the authorities referred to by him in the immediately preceding paragraphs of his judgment, a side by side comparison of the artistic work and the alleged infringing work for the purpose of determining whether there was sufficient objective similarity. Of course, almost the same sets of characters were involved in each of the works, but there remained a question whether one of those sets of characters represented an act of copying from the other.
71 Having found objective similarity, Conti J made a finding that it was ‘rightly attributable by [ACN] to copying, rather than to the mere use or reflection by [MCP] of an unprotected idea or style’. This finding was plainly open to his Honour in light of his rejection of the evidence called by MCP for the purpose of refuting the allegation of copying.
72 It is not in dispute that ACN’s masthead, consisting of a particular set of four characters in the Li Shu style as handwritten by Professor Huang, is an artistic work. Copyright is claimed only in ‘the distinctive form and style in which those words were visually painted and expressed through the calligraphy of Professor Huang’. It is not in dispute that MCP changed its masthead to mimic as much as possible that artistic work. It executed that result by means of a computer, rather than by means of a brush. The use of a computer as the means of copying does not preclude a breach of copyright. MCP’s argument focuses attention not on what they did, but on how they achieved it. The resulting style, while able to be differentiated by an expert, was held by the primary judge to have the requisite objective similarity. That finding, which Conti J attributed to copying, is not challenged. The result of the copying was the same four characters used previously by MCP, but this time in the Li Shu style, similar to that of Professor Huang. We agree with his Honour’s conclusion that breach of copyright was made out.
Disposition
73 In our opinion, the appropriate orders are that leave to appeal be granted but that the appeal be dismissed with costs.
|
I certify that the preceding seventy-three (73) numbered paragraphs are a
true copy of the Reasons for Judgment herein of the Honourable
Justices Wilcox,
Kiefel and Bennett.
|
Associate:
Dated: 10 August 2004
|
Counsel for the Applicants:
|
Mr D K Catterns QC, Mr S C G Burley, Mr N R Murray
|
|
|
|
|
Solicitor for the Applicants:
|
Kalantzis Lawyers
|
|
|
|
|
Counsel for the Respondent:
|
Mr J V Nicholas SC, Mr M Green
|
|
|
|
|
Solicitor for the Respondent:
|
Chris Lai & Associates Solicitors
|
|
|
|
|
Date of Hearing:
|
10 May 2004
|
|
|
|
|
Date of Judgment:
|
10 August 2004
|
AustLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.austlii.edu.au/au/cases/cth/FCAFC/2004/201.html