News website wins appeal in battle over name
InsuranceNEWS.com.au has won its appeal against an order to change its name.
Late in December a federal judge hearing the appeal set aside a federal magistrate’s findings and directed that the company which brought the action – JEM Nominees, the publisher of Insurance News Australia.com – pay the costs of the original trial and the appeal.
JEM Nominees first acted against insuranceNEWS.com.au in February last year demanding, among other things, that this website change its name and hand over its subscription list.
When it was rebuffed, JEM unsuccessfully applied for an injunction. In a hearing in the Federal Magistrate’s Court in April, the company claimed this website was in breach of Trade Practices Act provisions related to misleading and deceptive conduct and misrepresenting association.
Five months later, Federal Magistrate Grant Riethmuller ordered insuranceNEWS.com.au to change its name and issue a disclaimer to its subscribers disassociating itself from JEM Nominees’ publication.
InsuranceNEWS.com.au immediately appealed to the Federal Court, and a stay of the order to change its name was granted on September 29. However, the magistrate’s order to send the disclaimer to subscribers was continued.
The appeal was heard on December 17. In his judgement handed down just two days later, Justice Marshall referred to previous cases where companies using names made up of descriptive words in the same way as “insurance” and “news” had to prove their name had become distinctive “through a very substantial amount of use in the relevant marketplace”.
He said JEM Nominees had presented no evidence that its website’s name had acquired a distinctive meaning. He also noted the magistrate had not considered it necessary to consider the allegation of passing off and that “it may be likely that no such claim could be established”.
Glenn McGowan SC, appearing for insuranceNEWS.com.au, said a name “could scarcely be conceived more elegant and appropriate to describe the service offered than ‘insurance news’ ”.
“There can be no doubt that other traders would want to use such words, and they cannot be locked up by JEM unless it satisfies the court on proper evidence that it has a hard-won reputation.”
Mr McGowan said there “cannot be a realistic suggestion such a reputation has been acquired” by JEM Nominees. He said evidence of JEM’s subscription numbers and income, which was suppressed, showed its trade is “miniscule”.
“This is a classic case of a first-user wishing to tie up the market without backing it up with trade volume or reputation.”
He said reputational evidence presented by JEM was limited to an affidavit by Insurance News Australia Editor John Heath “that is lame and insufficient by a large measure”.
“When one adds to this the meagre trading and subscription figures, the picture is of a very small mouse-like business trying to roar into existence a reputation for which it has no evidence in support.”
InsuranceNEWS.com.au Publisher Terry McMullan says the accusation that his company had traded on JEM’s reputation was “offensive in very many ways”.
“We reported the magistrate’s ruling against us in September, because that’s how responsible journalism is supposed to work,” he said. “The report from Insurance News Australia on that judgement was well over 1000 words. But they haven’t published a single word on the result of the appeal. Enough said.”
Late in December a federal judge hearing the appeal set aside a federal magistrate’s findings and directed that the company which brought the action – JEM Nominees, the publisher of Insurance News Australia.com – pay the costs of the original trial and the appeal.
JEM Nominees first acted against insuranceNEWS.com.au in February last year demanding, among other things, that this website change its name and hand over its subscription list.
When it was rebuffed, JEM unsuccessfully applied for an injunction. In a hearing in the Federal Magistrate’s Court in April, the company claimed this website was in breach of Trade Practices Act provisions related to misleading and deceptive conduct and misrepresenting association.
Five months later, Federal Magistrate Grant Riethmuller ordered insuranceNEWS.com.au to change its name and issue a disclaimer to its subscribers disassociating itself from JEM Nominees’ publication.
InsuranceNEWS.com.au immediately appealed to the Federal Court, and a stay of the order to change its name was granted on September 29. However, the magistrate’s order to send the disclaimer to subscribers was continued.
The appeal was heard on December 17. In his judgement handed down just two days later, Justice Marshall referred to previous cases where companies using names made up of descriptive words in the same way as “insurance” and “news” had to prove their name had become distinctive “through a very substantial amount of use in the relevant marketplace”.
He said JEM Nominees had presented no evidence that its website’s name had acquired a distinctive meaning. He also noted the magistrate had not considered it necessary to consider the allegation of passing off and that “it may be likely that no such claim could be established”.
Glenn McGowan SC, appearing for insuranceNEWS.com.au, said a name “could scarcely be conceived more elegant and appropriate to describe the service offered than ‘insurance news’ ”.
“There can be no doubt that other traders would want to use such words, and they cannot be locked up by JEM unless it satisfies the court on proper evidence that it has a hard-won reputation.”
Mr McGowan said there “cannot be a realistic suggestion such a reputation has been acquired” by JEM Nominees. He said evidence of JEM’s subscription numbers and income, which was suppressed, showed its trade is “miniscule”.
“This is a classic case of a first-user wishing to tie up the market without backing it up with trade volume or reputation.”
He said reputational evidence presented by JEM was limited to an affidavit by Insurance News Australia Editor John Heath “that is lame and insufficient by a large measure”.
“When one adds to this the meagre trading and subscription figures, the picture is of a very small mouse-like business trying to roar into existence a reputation for which it has no evidence in support.”
InsuranceNEWS.com.au Publisher Terry McMullan says the accusation that his company had traded on JEM’s reputation was “offensive in very many ways”.
“We reported the magistrate’s ruling against us in September, because that’s how responsible journalism is supposed to work,” he said. “The report from Insurance News Australia on that judgement was well over 1000 words. But they haven’t published a single word on the result of the appeal. Enough said.”