|
|
[Home] [Help] [Databases] [WorldLII] [Feedback] | |
Digital Technology Law Journal |
Darren Spalding Asia Pacific Intellectual Property Law Institute Murdoch University
Introduction
1. The Federal Court handed down its decision in Australian Chinese Newspapers Pty Ltd v Melbourne Chinese Press Pty Ltd & Anor on 22 August 2003. The case involved questions of trade mark and copyright infringement.
2. The applicant, Australian Chinese Newspapers, is the independent publisher and distributor of a daily Chinese-language newspaper in Australia. The respondents, Melbourne Chinese Press and Chinese Times Newspapers, control a competitor newspaper.
3. Australian Chinese Newspapers claimed that the logo used by the respondents as part of the masthead for its newspaper was too similar to that used on its own newspaper. The applicant contended that the logo adopted by the respondents created a confusing marketing environment, which enabled the respondents to increase their newspaper’s circulation to the det riment of its own newspaper. As the applicant had a registered trade mark in respect of its logo, the principal cause of action was for trade mark infringement. Alternatively, the applicant claimed that the respondent had infringed the copyright in its logo, which constituted an artistic work.
The trade mark claim
4. Both the applicant’s and the respondents’ mastheads are composed of four Chinese characters. Three of the four characters are identical. The applicant’s logo has been used since 1996 and was registered as a trade mark in October 1998. The applicant claimed that the respondents’ logo, adopted in September 2000, was deceptively similar to its logo, with respect to the distinctive combination of the characters used and the eye- catching calligraphy style used.
5. The applicant introduced expert evidence to establish that although there were differences between the mastheads, Chinese readers would select a newspaper based on the overall shape of the newspaper, rather than through a careful reading of the logo. In addition, evidence was adduced from two newsagents that there was actual deception of members of the public caused by the respondents’ change to its masthead in September 2000. In contrast, the respondents’ introduced expert evidence to establish that the differences between the logos were “striking” and that Chinese readers are “purpose motivated” when selecting a newspaper and the use of a logo would not affect their selection.
6. Conti J held that Australian Chinese
Newspapers had established that the respondents’ logo was deceptively
similar to its own logo. The Court provided a variety of factors that led to
this
conclusion:
7. Conti J also found that the evidence disclosed the existence of “a purpose adopted by the respondents to deceive and confuse buyers and prospective buyers of the applicant’s newspaper with a view to attracting their patronage, as a consequence of an initial mistaken or unintended purchase at the counter.”
The copyright claim
8. The applicant pleaded that the respondents infringed its copyright in the artistic work inherent in its logo. The artistic work was created by using a traditional Chinese brush pen applied to rice paper.
9. Conti J held that the work was “sufficiently expressive” for it to constitute a painting for the purposes of copyright protection. Further, the work is original enough for the subsistence of copyright due to the knowledge, judgment, skill and labour expended in the production of the artistic work.
10. Given the finding of trade mark infringement, Conti J held that a finding of copyright infringement was “virtually inevitable”. The Court found that a substantial part of the work had been reproduced. The substantial part comprised the essence of the first two and fourth character’s of the applicant’s logo and the visual impression of the totality of the logo. Further, His Honour held that there was “a measure of objective similarity between the respondents’ most recent logo and the applicant’s artistic work, which has been rightly attributable by the applicant to copying, rather than to mere use or reflection by the respondents of an unprotected idea or style”.
11. Conti J ordered that the respondents be restrained from manufacturing, publishing, selling, supplying or distributing any newspapers using the logo. The order was stayed for thirty days to allow the respondents to design a new logo.