IPC Media guilty of passing off, as Home Beautiful dispute turns ugly
In Pacific Publications Pty Ltd v IPC Media Pty Ltd, the Federal Court has found the defendant guilty of (i) passing off its 25 Beautiful Homes magazine as the plaintiff's Home Beautiful publication, and (ii) breaching Section 52 of the Trade Practices Act. The court held that, although the defendant's magazine title is not deceptively similar to the plaintiff's, the overall look and content of the defendant's product, and its marketing techniques were likely to mislead consumers.
Pacific Publications publishes the magazine Home Beautiful in Australia and owns a number of trademark registrations, including HOME BEAUTIFUL. The magazine has been published since 1925 and features photographs and articles on beautiful homes. IPC Media distributes a British magazine called 25 Beautiful Homes that features photographs of 25 different homes and related text. IPC sold a few copies of the magazine in Australia and decided to launch a local version. Pacific brought an action to prevent publication, arguing that IPC:
- had infringed its HOME BEAUTIFUL mark;
- had passed off 25 Beautiful Homes as being connected with Home Beautiful; and
- had engaged in misleading and deceptive conduct in breach of Section 52 of the Trade Practices Act.
The court held that there was no trademark infringement because IPC's magazine title is neither deceptively similar to Pacific's mark nor its magazine title. However, the court agreed with the passing-off and breach of the Trade Practices Act claims. It reasoned that these claims were not limited to direct comparisons of the magazines' titles. The court, therefore, examined the content of both magazines as well as IPC's marketing techniques and concluded that there were a number of factors that could mislead consumers into believing that 25 Beautiful Homes was in some way connected with Home Beautiful. In particular, the court noted that:
- a significant proportion of photographs in 25 Beautiful Homes had already featured in Home Beautiful, albeit that there was no copyright issue involved;
- both magazines were aimed at the same type of readers and were of a similar price;
- the same words were used in the titles of both magazines;
- IPC had expressly asked newsagents to display 25 Beautiful Homes next to Home Beautiful; and
- the editorial in 25 Beautiful Homes did not mention any connection with IPC's UK magazine.
Julian Gyngell, Clayton Utz, Sydney
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