Miss World Ltd v Miss Ireland Beauty Pageant

• Jurisdiction: Ireland
• Judge: Miss Justice Laffoy
• Judgment Date: 10 February 2004
• Neutral Citation: [2004] IEHC 13
• Court: High Court
• Docket Number: [2003 No. 10438P]
• Date: 10 February 2004

[2004] IEHC 13

THE HIGH COURT

No. 10438P/2003

MISS WORLD LTD & ORS v. MISS IRELAND BEAUTY PAGEANT LTD & ORS

BETWEEN

MISS WORLD LIMITED, MARGARET HUMPRHIES AND ANDREA ROCHE

PLAINTIFFS

AND

MISS IRELAND BEAUTY PAGEANT LIMITED AND KIERAN MURRAY

DEFENDANTS

Citations:

WESTMAN HOLDINGS LTD V MCCORMACK 1992 1 IR 151

CAMPUS OIL V MIN ENERGY (NO 2) 1983 IR 88

RECKITT & COLMAN PRODUCTS LTD V BORDEN 1990 1 AER 873

BOROUGH OF MORECAMBE & HEYSHAM V MECCA LTD 1962 RPC 145

BOROUGH OF MORECAMBE & HEYSHAM V MECCA LTD 1966 RPC 423

TRADE MARKS ACT 1963

MISS WORLD (JERSEY) LTD MISS WORLD (UK) LTD MRS OF THE WORLD PAGEANTS INC, RE UNREP FEDERAL COURT OF AUSTRALIA PINCUS 1.2.1988

C & A MODES V C & A (WATERFORD) LTD 1976 IR 198

FALCON TRAVEL LTD V OWNERS ABROAD GROUP PLC 1991 1 IR 175

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

AMERICAN CYANAMID CO V ETHICON LTD 1975 AC 396

Synopsis:

INTELLECTUAL PROPERTY

Passing off

Interlocutory injunction - Whether plaintiff entitled to injunction restraining defendants passing off their pageants as those of plaintiff - Fair question to be tried - Adequacy of damages - Balance of convenience (2003/10438P - Laffoy J - 10/2/2004)

Miss World Ltd v Miss Ireland Beauty Pageant Ltd - [2004] 2 IR 394

Facts: The plaintiffs applied for an interlocutory injunction restraining the defendants from passing off any of their events or pageants as or for the Miss Ireland pageant of the plaintiffs and from passing off any of their events, pageants or products as being associated with the Miss Ireland pageant of the plaintiffs. The plaintiffs also sought, inter alia, an injunction requiring the cancellation of the defendant's domain name and email address.

Held by Laffoy J. in granting some of the relief sought that the balance of convenience lay in favour of the plaintiffs because the first plaintiff had been in the marketplace in its own right for over fifty years and had run a Miss Ireland pageant each year during that period. It would be impossible, not merely difficult, to quantify in damages the plaintiffs' loss.

Reporter: R.W.

1 JUDGMENT of Miss Justice Laffoy delivered on 10th February, 2004.

The Application

2 This is the plaintiffs" application for an interlocutory injunction restraining the defendants from passing off any of their events or pageants as or for the Miss Ireland pageant of the plaintiffs and from passing off any of their events, pageants or products as being associated with the Miss Ireland pageant of the plaintiffs. The plaintiffs also seek certain ancillary interlocutory orders, namely:

3 (1) an injunction requiring the cancellation of the defendants" domain name and e-mail address, which include in the name and address the term "Miss Ireland", and, pending cancellation, the disconnection of the domain name from any active internet address;

4 (2) an injunction requiring the defendants to cease operating any business under any name or style consisting of or including the term "Miss Ireland" or any other confusingly similar name;

5 (3) an injunction requiring the defendants to remove the term "Miss Ireland" from all business documentation; and

6 (4) an injunction requiring the defendants to remove from their websites the term "Miss Ireland" and any references to the Miss World competition that could-cause visitors to that website to believe that the defendants are franchisees of the first named plaintiff and restraining the defendants from doing any act or thing that could cause confusion in this respect in the future.

7 The first named plaintiff is a private company incorporated under the laws of Jersey, having its principal place of business in the United Kingdom. Its business is the organisation and running of the Miss World beauty pageant and other beauty pageants, including the Miss Ireland beauty pageant. The second and third named plaintiffs carry on business in the State and are currently the franchisees of the first named plaintiff to organise a beauty pageant in Ireland to select a representative, designated as "Miss Ireland", to participate in the Miss World contest.

8 The first named defendant, a limited liability company, was incorporated in the State in 1998. The second named defendant is a director and shareholder of the first named defendant. Formerly he held the franchise from the first named plaintiff to organise a beauty pageant in Ireland to select a representative, designated as "Miss Ireland", to participate in the Miss World contest. Currently he holds franchises to send contestants to represent Ireland at three international beauty pageants: the Miss Universe contest, the Miss Europe contest and the Miss International contest.

9 These proceedings were initiated by a plenary summons issued on 16 ^th September 2003. On the same day, the notice of motion which is before the court, which was first returnable for 24 ^th September 2003, was issued. Six affidavits have been filed on behalf of the plaintiff and six on behalf of the defendants. The principal affidavits filed on behalf of the plaintiffs were sworn by Julia Morley (Mrs. Morley), the chairperson and a director of the first named plaintiff. The second named defendant swore the principal affidavits in reply. As is to be expected in a matter of this nature, the affidavits are disputative, argumentative and raise a plethora of conflicts of fact. It is not the function of the court to attempt to resolve such conflicts on this application. The function of the Court is to determine whether -

10 (a) the plaintiffs have raised a fair and bona fidequestion to be tried,

11 (b) if they have, in the event of being refused an injunction and succeeding in the action, the plaintiffs would be adequately compensated by damages,

12 (c) if they would not, in the event of the injunction being granted and the plaintiffs failing to succeed in the action, the defendants would be adequately compensated by damages, and

13 (d) the balance of convenience lies in favour of granting or refusing the injunction.

14 Both sides drew the Court's attention to the following statement of Finlay C.J. in Westman Holdings-Limited v. McCormack [1992] 1 I.R. 151 (at pp. 157-158):

"Having regard to the decision of this Court in Campus Oil v. The Minister for Energy (No. 2) [1983] I.R. 88, I am satisfied that once a conclusion is reached that the plaintiff seeking an interlocutory injunction has raised a fair question to be tried at the hearing of the action in which, if he succeeded, he would be entitled to a permanent injunction that the Court should not express any view on the strength of the contending submissions leading to the raising of such a fair and bona fide question, but should proceed to consider the other matters which then arise in relation to the granting of an interlocutory injunction."

Fair question to be tried

15 The wrong which the plaintiffs allege and contend the Court should intervene to remedy is passing off. There is agreement as to what the plaintiffs will have to prove in order to succeed in the action. Both sides referred the court to the three part test formulated by Lord Oliver in Reckitt & Colman Products Limited v. Borden Inc. & Others [1990] 1 All ER 873. In his speech (at p. 880) Lord Oliver said:

"The law of passing off can be summarised in one short proposition, no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying "get-up" (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Second, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely on a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Third, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff."

First element of the test: reputation/goodwill

16 Counsel for the defendants laid particular emphasis on the requirement that, to establish a goodwill or reputation, the brand name must be recognised by the public as distinctive specifically of the plaintiffs" services. For the plaintiffs to succeed in their action, he submitted, they must establish that the name Miss Ireland is exclusively associated with them; in other words, that it is distinctive of their business. He urged that the evidence before the Court shows that the name Miss Ireland could not on any basis be said to be exclusively associated with the plaintiffs and that, accordingly, the plaintiffs have not established that there is a serious issue to be tried.

17 The history of the involvement of the Miss World organisation (the expression adopted by Mrs. Morley to...