Federal Court of Australia Upholds Language Mark

18 August 2004

Federal Court of Australia Upholds Language Mark

The Federal Court of Australia has recently upheld a decision of trade mark infringement
concerning a Chinese newspaper.

The three appeal judges of the Court upheld a judgement which held that the Melbourne Chinese
Press (MCP) had infringed the Australian Chinese Newspapers’ (ACN) trade mark.

Both of the parties were in competition against each other as publishers of newspapers written in
the Chinese language and aimed at the Chinese community within Australia.

The dispute is over ACN’s title used on its newspaper consisting of four characters in Cantonese.
When translated into English it reads “Oh Chow Sun Pao” which means “Australian News Report”. The
description of the mark was detailed as being written in the Li Shu style of calligraphy created
by Professor Huang specifically for the newspaper.

MCP subsequently adopted a title also consisting of the words “O Chau Yat Pao” which means
“Australian Daily Newspaper” the words were depicted in a Hsing-Shu style. Three years after the
title was adopted MCP decided to adopt the Li Shu style.

ACN sued MCP for trade mark infringement stating that the marks were so similar that only one
character in the defendant’s title was different and that the style adopted was an apparent
attempt to mimic the claimant’s newspaper.

ACN went on to argue that the logos were also very similar and that its logo was an artistic work
and therefore MCP had also infringed its copyright.

MCP’s mitigating factor which it sought to rely on was that the title consisted of a different
character which was a vital element to its meaning and therefore there was not an infringement.

The Judge at first instance granted an injunction to ACN. The logo was confusingly similar to
CAN’s mark and therefore the defendant had deliberately adopted a similar mark in order to confuse
consumers. The Judge also held that a substantial part of the logo had been copied and therefore
there was an infringement of the Claimant’s artist work.

The Judge subsequently ordered that the Defendant refrain from using the logo on its newspaper.

MCP appealed on the basis that attention was not drawn upon the third character of its logo which
was an important factor as it was the only non-descriptive element of the word and therefore added
additional distinctive character sufficient enough to differentiate itself from the Claimant. MCP
also sought to rely on the fact that the calligraphy was different as it was computer generated.

The Appeal Court dismissed the appeal on the basis that the mark should be appreciated as a whole
and should not look to analyse the mark word by word.

The Court stated:

MCP “seems to ignore the principle that the [MCP] logo and the [ACN] 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”.

Addressing the calligraphy of the mark it went on to say “The use of a computer as the means of
copying does not preclude breach of copyright.”

Daniel Doherty