The Irish Times Ltd v Times Newspapers Ltd

• Jurisdiction: Ireland
• Judge: Mr. Justice Hedigan
• Judgment Date: 27 July 2015
• Neutral Citation: [2015] IEHC 490
• Court: High Court
• Docket Number: [2015 No. 03941 P.]
• Date: 27 July 2015

[2015] IEHC 490

THE HIGH COURT

COMMERCIAL

Hedigan J.

[2015 No. 03941 P.]

BETWEEN

THE IRISH TIMES LIMITED

PLAINTIFF

AND

TIMES NEWSPAPERS LIMITED

DEFENDANT

Intellectual property – Infringement of Trademark – Passing off – S. 15 (2) (b) of Trade Marks Act 1996 – Descriptor of geographical origin – Interlocutory injunction – Delay – Concurrent existence – Estoppel

Facts: Following the institution of infringement of trademark and passing off proceedings by the plaintiff against the defendant, the plaintiff now sought an interlocutory injunction restraining the defendant from launching its new digital paper in Ireland. The plaintiff contended that the use of the mark 'The Times Irish Edition' by the defendant for its online newspaper was an infringement of the plaintiff's 'The Irish Times' trademark that had been in use since 1859 for the plaintiff' newspaper. The plaintiff contended that the use of 'The Times Irish Edition' mark by the defendant would likely cause confusion in the minds of the readers that it was the publication of the plaintiff and thus, it would reduce its readership. The defendant contended that it was the holder of the trademark 'The Times' and the term 'Irish Edition' was a mere connotation that it was an Irish edition of a foreign paper and thus a descriptor of the place from where the newspaper was being published as envisaged under s. 15 (2) (b) of Trade Marks Act 1996.

Mr. Justice Hedigan refused to grant an interlocutory injunction to the plaintiff. The Court held that 'The Times' had been known in Ireland before 'The Irish Times' was first published and both newspapers had co-existed for more than a decade and boasted of separate and well-informed readership. The Court found that it was within knowledge of the plaintiff and the publishing industry that the launch of the defendant's online newspaper would likely create confusion and direct competition yet the plaintiff did not take any prompt action to seek any order to that effect, hence, the application would be befitted on the ground of delay. The Court found that the peaceful co-existence of the defendant's newspaper 'The Times' along with the plaintiff's newspaper 'The Sunday Times' though capable of creating confusion acted as an estoppel for the plaintiff to bring an action against the defendant. The Court observed that to allege passing off, it was necessary to establish that the goods of the defendant were being passed off as belonging to the plaintiff and in the present case, the defendant being the lawful holder of its own trademark was not representing his publication as that of the plaintiff and also the plaintiff did not suffer any damage whatsoever. The Court held that the term 'Irish Edition' would be a descriptor that intended to convey the place of origin rather than infringing the trademark of the plaintiff.

JUDGMENT of Mr. Justice Hedigan on 27th day of July, 2015

Introduction

1.1 This is an application for an interlocutory injunction restraining the defendant from launching its new digital paper in Ireland pending the hearing of the full action. The substantive proceedings to restrain threatened infringement of the plaintiff's Irish and Community trade marks, contrary to the Trade Marks Act, 1996 and the Community Trade Mark Regulation 207/2009, and threatened passing off on the part of the defendant, in connection with the defendant's launch of its new digital publication, being an on-line daily edition of the UK newspaper 'The Times' targeted at the Irish market and to be called 'The Times (Irish Edition)'. The launch is due to take place at the end of the month and the publication will be promoted in digital, television and radio advertising campaigns in August and September.

1.2 By second amended notice of motion, the plaintiff seeks the following reliefs:-

'1. An Order, pending the trial of the proceedings, restraining the Defendant (whether by itself, its directors, officers, servants or agents or otherwise howsoever described) from infringing the Plaintiff's Community Trade Marks and Irish Trade Marks as listed in the Schedule to the Plenary Summons herein by (without prejudice to the generality of the foregoing):-

(i) promoting its new digital publication using the names THE TIMES IRISH EDITION, THE IRISH EDITION OF THE TIMES, THE TIMES & SUNDAY TIMES (IRISH EDITION) or any other title or name confusingly similar to THE IRISH TIMES, in any manner whatsoever, including by using that name as a domain name, Twitter account name or email address;

(ii) making the app submission in the form and with the content as set forth in the letter from the Defendant's solicitors of 2 July 2015;

(iii) promoting or launching a new digital publication with the digital masthead as provided in the tablet image mock-up as set forth in the letter from the Defendant's solicitors of 2 July 2015;

(iv) using the "T" logo used as its Twitter account "@TheTimesIRL', or any logo confusingly similar to the "IT" logo set forth in the Schedule to the Plenary Summons;

(v) promoting a new digital publication using the digital, radio or television advertisements furnished under cover of letter of 15 July 2015 from the Defendant's solicitors.

2. An Order, pending the trial of the proceedings, restraining the Defendant (whether by itself, its directors, officers, servants or agents or otherwise howsoever described) from passing off any publication as that of, or associated with, the Plaintiff, by (without prejudice to the generality of the foregoing):-

(i) promoting its new digital publication using the names THE TIMES IRISH EDITION, THE IRISH EDITION OF THE TIMES, THE TIMES & SUNDAY TIMES (IRISH EDITION) or any other title or name confusingly similar to THE IRISH TIMES, in any manner whatsoever, including by using that name as a domain name, Twitter account name or email address;

(ii) making the app submission in the form and with the content as set forth in the letter from the Defendant's solicitors of 2 July 2015;

(iii) promoting or launching a new digital publication with the digital masthead as provided in the tablet image mock-up as set forth in the letter from the Defendant's solicitors of 2 July 2015;

(iv) using the "T" logo used as its Twitter account "@TheTimesIRL', or any logo confusingly similar to the "IT" logo set forth in the Schedule to the Plenary Summons;

(v) promoting a new digital publication using the digital, radio or television advertisements furnished under cover of letter of 15b July 2015 from the Defendant's solicitors.

3. An Order, pending the trial of the proceedings, restraining the Defendant (whether by itself, its directors, officers, servants or agents or otherwise howsoever described) from infringing the copyright of the Plaintiff in its "IT" logo depicted in the schedule to the Plenary Summons, including by (without prejudice to the generality of the foregoing) using the "T" logo used as its Twitter account "@TheTimesIRL", or any logo which constitutes a substantial reproduction of the "IT" logo of the Plaintiff;

4. An order for the costs of this application;

5. Such further or other Order as to this Honourable Court shall seem fit;

6. Costs of these proceedings.'

The Parties

2.1 The plaintiff's newspaper 'The Irish Times' was established in 1859 and is one of the most prominent indigenous brands in the country. The Plaintiff has a digital daily publication of its newspaper. There is a monthly online audience on irishtimes.com of over 6.5 million unique users. The plaintiff has been granted trade marks by both the Irish Patents Office and the Community Trade Mark Office in marks including THE IRISH TIMES.

2.2 The Defendant is a News Corp company which publishes 'The Times' newspaper (which currently has no Irish edition and the Irish edition of 'The Sunday Times'. It has a daily digital UK edition of 'The Times', but presently has no Irish digital daily edition. The Defendant holds trade mark registration for THE TIMES. The Times has been available in Ireland since 1787.

The Statutory Framework

3.1 Section 14(2)(b) of the Trade Marks Act 1996 provides:-

'(2) A person shall infringe a registered trade mark if that person uses in the course of trade a sign where because—

...

(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark 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 trade mark.'

3.2 Section 14(3) provides:-

'A person shall infringe a registered trade mark if that person uses in the course of trade in relation to goods or services a sign which is identical with or similar to the trade mark where the trade mark has a reputation in the State and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trade mark.'.

3.3 Section 14(4) states:-

'For the purposes of this section, use of a sign shall include, in particular—

(d) using the sign on business papers or in advertising.'

3.4 Section 15(1) provides:-

'A registered trade mark shall not be infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered, but subject to section 52 (6).'

3.5 Section 15(2)(b) states:-

'A registered trade mark shall not be infringed by—

(b) the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service or other characteristics of goods or services...

Provided that such use is in accordance with honest practices in industrial and commercial matters.'

Submissions of the Plaintiffs

4.1 The plaintiff contends that the issue between the parties has...