Metro International S.A. and Others v Independent News & Media Plc

• Jurisdiction: Ireland
• Judge: Mr. Justice Clarke
• Judgment Date: 07 October 2005
• Neutral Citation: [2005] IEHC 309
• Court: High Court
• Date: 07 October 2005

METRO INTERNATIONAL SA & ORS v INDEPENDEN T NEWS & MEDIA PLC

BETWEEN

METRO INTERNATIONAL S.A., TIDNINGS AB METRO AND FORTUNEGREEN LIMITED

PLAINTIFFS

AND

INDEPENDENT NEWS & MEDIA PLC

DEFENDANTS

[2005] IEHC 309

[No. 3177P/2005]

THE HIGH COURT

INJUNCTIONS

interlocutory

Trade marks - Likelihood of confusion - Adequacy of damages - Balance of convenience - Interference with property right - Whether potential loss quantifiable - Plaintiff owning trade mark for "Metro" - Whether use by defendant should be restrained -Smithkline v Antigen Pharmaceuticals Ltd [1999] 2 ILRM 190 and B & S Ltd v Irish Autotrader Ltd [1995] 2 IR 142 followed - Trade Mark Act 1996 (No 6), s 14(2) - Injunction granted (2005/3177P - Clarke - 7/10/2005) [2005] IEHC 309

METRO INTERNATIONAL SA & ORS v INDEPENDEN T NEWS & MEDIA PLC

TRADE MARKS ACT 1996 S14(2)

SMITHKLINE BEECHAM v ANTIGEN PHARMACEUTICALS LTD 1999 2 ILRM 190

EEC DIR 89/104

SABEL BV v PUMA AG & ORS 1997 ECR I-6191 1998 RPC 199

GUARDIAN MEDIA GROUPS PLC v ASSOCIATED NEWSPAPERS LTD UNREP UK 14.1.2000 & CA 20.1.2000

B & S LTD v IRISH AUTO TRADER LTD 1995 2 IR 142 1995 2 ILRM 152

SYMONDS CIDER & ENGLISH WINE CO LTD v SHOWERINGS (IRL) LTD 1997 1 ILRM 481

WESTMAN HOLDINGS LTD v MCCORMACK 1992 1 IR 151

MITCHELSTOWN CO-OPERATIVE AGRICULTURAL SOCIETY LTD v GOLDEN VALE FOOD PRODUCTS LTD UNREP COSTELLO 12.12.85 1985/9/2534

DSG RETAIL LTD v PC WORLD LTD & ORS UNREP LAFFOY 13.1.1998 1998/5/1152

DUBLIN PORT & DOCKS BOARD v BRITANNIA DREDGING CO LTD 1968 IR 136

DOHERTY v ALLMAN 1878 3 AC 709

(BALBRIGGAN) LTDIRISH SHELL LTD v JH MCLOUGHLIN UNREP CLARKE 4.8.2005

NATIONWIDE BUILDING SOCIETY v NATIONWIDE ESTATE AGENTS LTD 1987 FSR 579

1 JUDGMENT of Mr. Justice Clarkedelivered the 7th October, 2005.

1. INTRODUCTION

2 2 1.1 The third named plaintiff ("Fortunegreen") is about to launch a free newspaper which it intends to call "Metro" and which it intends will be distributed by hand at busy locations in Dublin. Fortunegreen is a joint venture between the first plaintiffs ("Metro") and Associated Newspapers Limited ("Associated Newspapers"). Metro is the parent company of the Metro International Group of Companies, which, it would appear, publishes 57 daily free newspaper editions under the name "Metro" in 81 cities in 18 countries across Europe, North and South America and Asia. Associated Newspapers similarly publishes and distributes a free newspaper called "Metro" in the United Kingdom in the 13 largest cities in that jurisdiction including London, Manchester, Birmingham, Glasgow and Edinburgh. On the evidence available at this stage it would appear that a similar method of publication and distribution is adopted both by Metro and by Associated Newspapers.

3 It is intended that Fortunegreen will publish, in Ireland, a similar free newspaper using the title "Metro".

4 3 1.2 The second named plaintiff (which is a wholly owned subsidiary of Metro) holds a registered trade mark in Ireland in respect of a Metro device or stylised mark. That mark is registered under No. 219849 and was applied for in 1998. The device is a representation of the word Metro with the O depicted in the form of a globe. The registered device appears in the following form:

5 4 1.3 In fact the newspaper that Fortunegreen intends to publish, is likely to bear a masthead which is similar to those used by Associated Newspapers in the United Kingdom and which, it will be seen, differs to some extent from the registered mark. The United Kingdom masthead is in the following form:

6 5 1.4 The proceedings stem from the stated intent of the defendants ("Independent") to launch their own free newspaper under the title "Herald Metro Edition". In the 6 course of these proceedings Independent caused to be exhibited a copy of the masthead under which their free newspaper is intended to be published and marketed.

7 It appears as follows:

8 6 1.5 Independent is, of course, the publisher of, amongst other prominent titles, the "Evening Herald" which, as was pointed out both in the affidavit evidence tendered on Independent's behalf, and in argument, is a newspaper which has been in publication for a century and is Ireland's largest selling evening newspaper, selling an average of in excess 93,000 copies per day Monday to Friday. As can be seen from the above masthead the "Herald" logo (which appears in red on the original exhibit of the intended masthead), is borrowed directly both as to colour and typescript from the masthead of the existing "Evening Herald" newspaper.

9 7 1.6 It was also established in evidence that Independent has made use of the term "Metro" in describing certain editions of some of its newspapers or in relation to certain supplements or segments of such newspapers. It would obviously be inappropriate to reach any concluded view as to the extent to which it may be said that Independent has established a use of the term "Metro" in respect of its newspapers to the extent that it may have an effect on any of the legal rights involved in the dispute between these parties. Such a matter can only be resolved at the full trial of the action in this case. However at this stage it should also be noted that the plaintiffs, correctly in my view, draw attention to the fact that the apparent use of the term "Metro" by Independent in the past has been confined either to a relatively small (in size) description of a particular edition of an individual newspaper for the purposes of distinguishing it from other editions of the same newspaper or to describing individual segments or supplements of a newspaper rather than in respect of the principal title thereof. This latter fact is emphasised by an application which Independent has made for the registration of a trade mark comprising of the name "Metro" which is stated to be in respect of "newspaper supplements". There does not, at this stage, appear to be any evidence of a previous use of the term "Metro" in what might be called the main title of a substantive newspaper.

10 8 1.7 It should also be noted that it is common case that the intention of Independent to publish its free sheet newspaper is, at least in significant part, a reaction to the proposal by Fortunegreen to publish its "Metro". As is pointed out by Joseph Webb, the Deputy Managing Director of Independent, Independent "resolved that in the event that any third party began to publish a free sheet newspaper within the Dublin Metropolitan Area (Independent) would also do so, in order to protect its legitimate business interests and develop its existing titles, in particular the Evening Herald". There is nothing, of course, inappropriate in Independent seeking to protect its legitimate business interests by launching a competing free newspaper to that contemplated by the plaintiffs. The issue in this case is as to whether it can do so making use of the term "Metro".

11 9 1.8 In those circumstances the plaintiffs have commenced proceedings which contend, amongst other things, that by publishing and distributing a newspaper under such a masthead Independent would infringe the trade mark referred to above. The case has come before the court as an urgent application for interlocutory relief in circumstances where the plaintiffs wish to commence publication in very early course (that is to say within a small number of days) and where the stated position of Independent would appear to be that it would be their intention to publish their free newspaper as an immediate response to the publication by the plaintiffs of the Metro free newspaper. So far as the interlocutory application, currently before the court, is concerned the only basis upon which publication in that form is sought to be restrained is as an alleged infringement of the trade mark to which I have referred. While the plaintiffs general endorsement includes a claim in respect of an injunction restraining and damages for passing off and while Independent has contended in correspondence that it, in turn, may issue proceedings in respect of passing off as against the plaintiffs the only legal issue with which I am concerned at this interlocutory application is, therefore, the plaintiffs claim for an injunction in respect of what they contend would be an infringement of their trade mark.

2. SERIOUS ISSUE (THE TEST)

12 2 2.1 While there was some significant debate at the hearing before me as to whether special circumstances may apply in the consideration of an application for an interlocutory injunction in relation to trademark and passing off matters it was not contended that the basic questions which need to be addressed in such an application are those which have been established in relation to interlocutory injunction applications generally. The above debate, to which I will return, centres on whether the approach of the court in respect of certain aspects of the tests which have been developed for the grant or refusal of interlocutory relief may be somewhat different in such cases.

13 3 2.2 However it is clear that the first question which needs to be addressed, as always, is as to whether the plaintiffs have established a serious issue to be tried. In those circumstances it is necessary to consider the plaintiffs case for infringement. 2.3 Section 14(2) of the Trade Marks Act 1996 provides that:-

"A person shall infringe a registered trademark if that person uses in the course of trade a sign where because - ..."

(b) the sign is similar to the trademark and is used in relation to goods or services identical with or similar to those for which the trademark is registered, there exists a likelihood of confusion on the part of the public which includes the likelihood of association of the sign with the trademark."

14 4 2.4 As was pointed out by McCracken J. in Smithkline v. Antigen Pharmaceuticals Limited ...