Local Ireland Ltd v Local Ireland-Online Ltd
| Jurisdiction | Ireland |
| Judge | Mr Justice Herbert |
| Judgment Date | 02 October 2000 |
| Neutral Citation | [2000] IEHC 67 |
| Docket Number | [H.C. No. 7854P of 2000] |
| Court | High Court |
| Date | 02 October 2000 |
[2000] IEHC 67
THE HIGH COURT
BETWEEN
AND
Citations:
REDDAWAY & CO V BANHAM 1896 AC 199
OFFICE CLEANING SERVICES LTD V WESTMINISTER OFFICE CLEANING ASSOCIATION 1946 1 AER 320
BS V IRISH AUTO TRADER 1995 2 ILRM 252
CAMPUS OIL LTD V MIN FOR INDUSTRY (NO 2) 1983 IR 88
KERLY LAW OF TRADE MARKS & TRADE NAMES 12ED 322 (NOTE 84)
MUCKROSS PARK HOTEL LTD V RANDLES 1995 1 IR 130
RECKITT & COLEMAN PRODUCTS LTD V BORDEN 1990 1 AER 873
POLYCELL PRODUCTS LTD V O'CARROLL 1959 IJ 34
MITCHELSTOWN CO-OPERATIVE AGRICULTURAL SOCIETY LTD V GOLDENVALE PRODUCTS LTD UNREP COSTELLO 12.12.1985 1985/9/2534
Synopsis:
Practice and Procedure
Interlocutory injunction; in 1997 plaintiffs registered domain names of local.ie, localireland.com, local-ireland.com, local-ireland.org and local-ireland.net; plaintiffs maintained Internet sites providing information relating to Ireland; defendant company was incorporated in June 2000 and was trading under the business name Local Ireland-Online; defendant had registered this domain name in June 2000; plaintiff's sent cease and desist letters to the defendants; once proceedings were commenced the defendants changed the domain name to locallyirish.com.; plaintiffs claim that they have established a substantial and exclusive reputation in their business name and that the similarity between the business and domain names would as a reasonable probability result in confusion; whether criteria for granting of an interlocutory injunction have been satisfied.
Held: Balance of convenience lies in granting the relief sought.
Local Ireland Limited v. Local Ireland-Online Limited - High Court: Herbert J. - 02/10/2000 - [2000] 4 IR 567
The plaintiffs had established a company under the name "Localireland" and registered the domain names "Localireland.com" and "local.ie". The plaintiffs subsequently became aware that the defendants had established a company under the name "Local Ireland-Online". The plaintiffs claimed that the defendants were operating and trading under names which amounted to passing off and were infringing their intellectual property rights. The plaintiffs sought an interlocutory injunction to restrain such activity. Herbert J, delivering judgment, held that the plaintiffs had a strong prima facie case that the use by the defendants of the names in question would amount to deception. Accordingly Herbert J granted the interlocutory injunction sought by the plaintiffs on the undertaking that damages would be paid by the plaintiffs should a court so order at the trial of the action.
Mr Justice Herbert delivered on the 2nd day of October 2000
The second named Plaintiff in these proceedings, Nua Limited, which was incorporated on the 20th of September 1995 developed in or about September 1996 an Internet Information Classification System which would provide users of the internet requiring information which related to Ireland with a simple and charge free means of accessing that information without having to engage in random searches through an ever expanding volume of information on the internet relating to Ireland. For this service the Second named Plaintiff devised the business name, "Localireland", alternatively "Local ireland", sometimes written as a single word and sometimes as two separate words. In either case by way of a distinctive logo the initial letter, "L" is presented in upper case with a swirl device like a crook or concentric crescents with one pair of the adjacent horns joined by a transverse line integrated into the right upper quarter of the vertical stroke of the letter and with the horizontal stroke of the letter presented as an equilateral triangle. The other eleven letters are always presented in lower case. The first five letters, including the initial "L" are always presented in bold type and where colour printing is used are always in a darker shade of colour.
In February 1997 a serious of electronic addresses for this system, generally known as, "domain names" were registered by the second named Plaintiff with an international control organisation known as, "Network Solutions". These domain names are "local.ie"; "localireland.com"; "local-ireland.com"; "local-ireland.org",and "local-ireland.net".
The first named Plaintiff, Local Ireland Limited was incorporated on the 24th November 1998, initially under the name "Chingola Limited", which was changed on the 11th December 1998 to its present name as a step in a joint venture business arrangement with Telecom Eireann now as known as Eircom plc. By an Intellectual Property Licence Agreement, dated 4th December 1998, the second named Plaintiff granted to the first named Plaintiff a non exclusive, non transferable licence in respect of its intellectual property rights in the reputation and good will in the name, get up and logo, "Localireland" alternatively "Local-ireland", and in the domain names, "Localireland.com" and "localie". On the 23rd June 2000 the first named Plaintiff became aware, as a result of a reply received by them to a newspaper advertisement, that an entity describing itself as, "Local Ireland-Online" alternatively "local ireland-online" was seeking staff. Contact was established with this entity which proved to be the first named Defendant a company which was incorporated on the 20th of June 2000. On behalf of the first named Defendant it was confirmed that it was trading and proposed to continue to trade under the business name, "Local Ireland-Online", offering a subscription business listing service through which local businesses would become accessible on the internet through the central web site of the first named Defendant. The Plaintiffs subsequently ascertained that a domain name, "localireland-online.com" had been registered by the second named Defendant on his own behalf on the 30th June 2000. It was subsequently confirmed that the first named Defendant was using and intended to continue to use this domain name.
A "cease and desist" letter, dated 27th June 2000 was sent to the first named Defendant and was acknowledged by a letter dated the 3rd of July 2000 from a firm of solicitors acting on behalf of both the Defendants. A similar letter dated the 4th July 2000 was sent to the second named Defendant. The Defendants maintain a legal right to use and unequivocally indicated an intention to continue to use the business name, "Local Ireland-Online" and the domain name, "localireland-online.com". The first named Defendant presented this business name as three separate words, with the middle word in bold type and separated by a hyphen from the final word. Sometimes the initial letter of each word was presented in upper case but otherwise each word was presented in lower case.
On the 6th of July 2000 the Plaintiffs issued a plenary summons and also a notice of motion. The notice of motion claimed an interlocutory injunction and was grounded on the affidavit of Mr Gerry McGovern, Chief Executive Officer of each of the Plaintiffs, sworn on the 6th of July 2000. By an order of this Court, (Mr Justice McCracken) made ex parte on the 6th of July 2000 the notice of motion was made returnable for the 10th of July 2000. The plenary summons, the notice of motion, the grounding affidavit and exhibits were served on each of the Defendants on the 7th of July 2000. An appearance was entered on behalf of both the Defendants on the 10th of July 2000. A Replying Affidavit was sworn on the 13th July 2000 by Mr Con Daly the second named Defendant in these proceedings and a director of the first named Defendant, on behalf of the first named Defendant. A further affidavit on behalf of the Plaintiffs was sworn on the 14th July 2000 by Mr Eoin MacGiolla Ri internal legal advisor of the first named Plaintiff.
As appears at paragraphs 12 and 17 of the affidavit of Mr Con Daly, the Defendants decided after the commencement of these proceedings to change the business name, "Local Ireland - Online" to, "Locally Irish" and in future to use only this name, "Locally Irish". This name is presented as two separate words with the second word always presented in bold type and sometimes with the initial letter in each word presented in upper case but always with the remaining letters in each word presented in lower case. No shading or colour differentiation is made between the two words. This get-up is accompanied by a logo consisting of two concentric crescents differentiated by colour or shading with a dark arrow like device entering between the horns of the inner crescent and the entire casting a dark lateral shadow and resting upon a white partial mirror image of itself. Sometimes the crescents face left with the arrow shaft in the two o'clock position and sometimes right with the arrow shaft in the ten o'clock position and are presented as standing vertically on a surface, colour or shading differentiated and either clear or with a variety of art work including a map of Ireland showing county outlines and names.
In addition a new domain name, "locallyirish.com","with all international variants", has been registered with Network Solutions. Why, and as regards the domain name, when, these changes were made is a matter of a very considerable dispute between the parties which I cannot resolve on this application and in respect of which I therefore draw no inferences whatsoever. For the purposes of this application it is sufficient to record that the Plaintiffs contend that notwithstanding the differences in get-up and logo which they claim are in any event insufficient, the use by the Defendants of the business name, "LocallyIrish" and the domain name, "locallyirish.com", or the business name, "Local...
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