Passing off: the get-up of magazines – how close is too close? Healthy Food Media Ltd v Healthy Options Limited

This decision of Justice Asher demonstrates that in some circumstances it is possible to rely on the tort of passing off and/or breach of the Fair Trading Act to obtain an interim injunction to prevent the publication of a magazine which has a confusingly similar name or get-up to one already on the market.

While the courts are generally slow to give protection to a trader that chooses to use a descriptive title for its magazine, this case gives some guidance as to what types of conduct in this context may be restrained. 

The facts of this case were straightforward.  The plaintiff was the publisher of the Healthy Food Guide and sought an injunction to prevent the defendant from distributing, circulating and/or selling a competing magazine.  That magazine was to be entitled Health Food A Nutritional Guide.  The plaintiff’s application came on before Justice Asher on an ex parte basis.  Accordingly he directed that a full set of the pleadings be served on the defendant, together with a copy of his minutes which recorded that the application would be heard the following day.  The plaintiff served the defendant but despite this, there was no appearance by the defendant.

In outlining the background circumstances, Justice Asher described how the solicitors acting for the plaintiff had written to the defendant requesting undertakings not to publish the magazine but had not received any substantive response.

In the absence of the defendant, Justice Asher approached the application on the usual basis of considering whether:

(a)	there was a serious question to be tried; and
(b)	that the balance of convenience and the overall justice of the case favoured the granting of an injunction.

In the course of his judgment, Justice Asher referred to the orthodox position in relation to the use of descriptive words by traders to promote their products:

[18]  The title of the plaintiff’s magazine Healthy Food Guide is a descriptive title using ordinary words in common parlance.  Indeed, the words exactly describe what the magazine sets out to do.  It is clear that a party that chooses to use such words as a trade name must accept that it has no right to those words individually or in combination, and that competitors may use them also.  That position was well expressed in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216; (1978) ATPR 40-067, (quoted with approval in Independent Newspapers Ltd v Australian Consolidated Press NZ Ltd [1996] 3 NZLR 722 and 725):

There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name.  Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public.

But Justice Asher considered that the defendant had gone a lot further than just using descriptive words that were also used by the plaintiff.  He outlined various factors which led him to conclude that there was a serious question to be tried in relation to the passing off and Fair Trading Act causes of action.  Some of the similar features which led him to this conclusion were:

• the magazines where of similar size;
  
  
• the names were similar: Healthy Food Guide and Health Food A Nutritional Guide;
  
  
• the defendant’s proposed magazine had "Health Food" at the top of the magazine in a very similar position to the plaintiff’s "Healthy Food";
  
  
• the lettering used was similar; and
  
  
• the colouring of the letters used was similar.

He then turned to consider the balance of convenience.  Here Justice Asher reached the conclusion that damages would not be an adequate remedy for the plaintiff if it made out its case.  In reaching this conclusion he took into account the plaintiff’s submissions that its goodwill would be damaged by the defendant's publication through loss of sales; the possibility that readers might be put off by the plaintiff’s publication because of their experience in reading and using the defendant's publication believing it to be that of the plaintiff; a loss of distinctiveness of get-up; and the potential for the loss and/or diversion of advertising revenue which might result if readership numbers declined.

Justice Asher then turned to consider the overall justice of the case.  In this context, in addition to the usual factors taken into account, Justice Asher considered the defendant's cavalier response to the plaintiff's letters counted against it.  In this regard, he stated:

“The plaintiff's letters were responsibly written expressing an obvious and legitimate concern and warranted a substantive response.  None was forthcoming.  It was quite unsatisfactory to suggest that the plaintiff should wait until a particular person returned to New Zealand after publication and distribution of the defendant’s magazine.  It is significant that absolutely no attempt has been made by the defendant to justify its actions, and that no attempt has been made to arrange an appearance this afternoon.”

Against this background, and noting that the multiplicity of coincidences between the two magazine’s get-ups gave rise to the possibility that the defendant’s adoption of the relevant features was deliberate, Justice Asher granted the injunction sought.

The important thing to take from this decision is that while the courts are usually slow to allow traders to monopolise descriptive terms, adopting a get-up consisting of a number of features identical or similar to a competitor's publication can lead to significant trouble.  This was an illustration of one publisher "sailing too close to the wind" and promptly paying the consequences for doing so. 

The case also illustrates that it is most unwise to decline an opportunity to be heard at an interim injunction application when it is directed to be served on you on short notice (i.e. when the application is served on a Pickwick basis).

Enquiries and information

For more information on passing off or any other intellectual property issues please email Garry Williams or call Garry on 64 9 916 8661.