Emap Elan Ltd & Ors v Pacific Publications Pty Ltd [1997] FCA 50

Emap Elan Ltd & Ors v Pacific Publications Pty Ltd [1997] FCA 50

The applicants established a strong serious issue because their magazine "more!" had a sufficient reputation in Australia and the respondent's proposed use of the identical title "more" for a women's magazine was likely to mislead persons aware of the English publication into believing there was a licensing or other business connection. The respondent proceeded despite knowledge of the United Kingdom publication and without inquiry into Australian sales. Given the strength of the applicants' case, the public interest under the Trade Practices Act 1974 (Cth), the risk to the applicants' goodwill and licensing opportunities, and the undertaking as to damages with security, the balance of...

Jurisdiction
Australia
Judgment Date
30 January 1997
Procedural Posture
Application for Interlocutory Injunction in Passing Off and Under S52 of the Trade Practices Act 1974 (cth) / Interlocutory Relief
Outcome
Interlocutory injunction granted until further order; respondent ordered to pay the applicants' costs of the interlocutory proceedings.
Legal Topics
['passing Off' 'misleading or Deceptive Conduct' 'interlocutory Injunction' 'reputation in Australia' 'magazine Title']
['intellectual Property' 'consumer Protection' 'equity'] ['passing Off' 'misleading or Deceptive Conduct' 'interlocutory Injunction' 'reputation in Australia' 'magazine Title']

Case Brief

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Procedural Posture

Application for Interlocutory Injunction in Passing Off and Under S52 of the Trade Practices Act 1974 (cth) / Interlocutory Relief

Legal Issues

  1. 1 ['Whether the applicants had shown a serious issue to be tried in passing off and misleading or deceptive conduct arising from the respondent\'s proposed use of the title "more" for a magazine in Australia.' 'Whether the applicants had a sufficient reputation in Australia in the United Kingdom magazine "more!".' "Whether consumers were likely to be misled into believing that the respondent's Australian magazine was connected by licensing or otherwise with the applicants' United Kingdom magazine." 'Whether the balance of convenience favoured interlocutory restraint and whether damages would be an adequate remedy.']

Ratio Decidendi

The applicants established a strong serious issue because their magazine "more!" had a sufficient reputation in Australia and the respondent's proposed use of the identical title "more" for a women's magazine was likely to mislead persons aware of the English publication into believing there was a licensing or other business connection. The respondent proceeded despite knowledge of the United Kingdom publication and without inquiry into Australian sales. Given the strength of the applicants' case, the public interest under the Trade Practices Act 1974 (Cth), the risk to the applicants' goodwill and licensing opportunities, and the undertaking as to damages with security, the balance of...

Court Disposition

Interlocutory injunction granted until further order; respondent ordered to pay the applicants' costs of the interlocutory proceedings.

Orders

  • ['Liberty to apply on 24 hours notice relating to any matter.' 'The applicants give the ordinary undertakings as to damages.' 'The applicants undertake to provide security in an appropriate form acceptable to the Court, to the extent of $500,000 to be given on or before 14 February 1997.' 'The respondent, until...