Healthy Food Media Limited v Healthy Options Limited

High Court, Auckland, CIV 2005-404-6484, Asher J, 16 November 2005

Wadlow: The Law of Passing Off (3rd edition) para 8-96 observes that liability for passing off in respect of newspaper and magazine titles is rare in practice. The fact that magazine proprietors choose titles that are self-evidently descriptive of content, area or frequency of publication does not help their case. Ordinarily small differences will suffice to distinguish.

The present case breaks the usual pattern. Here an ex parte application for injunction (served on a “Pickwick” basis) was successful against a rival magazine title. The plaintiff published a monthly magazine, Healthy Food Guide. The defendant was about to publish a rival magazine Health Food: A Nutritional Guide. Asher J granted the injunction for a combination of reasons:

(a)   Although the titles were descriptive, with the usual consequences flowing from such a choice, here the defendant had gone a lot further and had chosen a similar size, similar positioning of the words “Health Food”, similar lettering and similar colouration of lettering [paras 19-20]. The court was satisfied that there was a real danger that the public would be confused by the two titles - particularly because of the colouration, layout and arrangement;

(b)   The failure of the defendant to respond to letters of demand or even to appear when the court ordered service of the application on a “Pickwick” basis;

(c)   The fact the injunction was not to prevent publication of any magazine in the health area or with some of the individual features complained of - rather the publication of a magazine having the combination of features.