AssociatedNewspapersvExpressNewspapers

15 July 2003

Anna Duffus

In a recent decision of Mr Justice Laddie (11 June 2003) the High Court has considered the extent to which a national newspaper brand may be protected. Associated Newspapers (the proprietor of the Daily Mail and The Mail on Sunday) sought to prevent Express Newspapers (proprietor of the Daily Express and the Sunday Express) from its proposed launch in the London area of a free evening paper to be titled Evening Mail or London Evening Mail. Associated relied on its common law and registered trade mark rights in The Mail, Daily Mail and The Mail on Sunday and claimed that the proposed launch by Express Newspapers would amount to passing off and trade mark infringement.

The High Court ruled in favour of Associated, finding that the passing off claim succeeded as did most of the claim for trade mark infringement. In addition, it rejected The Express counterclaim for invalidity of Associated’s registered trade mark for THE MAIL.

The case generated interest among the UK press, both because it demonstrated success in enforcing the common law rights which a national newspaper may have in the short form of its name (in this case, The Mail) and because of the result – preventing Express Newspapers from launching its proposed free London newspaper under the title Evening Mail (a title which Express Newspapers accepted was provocative to Associated).

From a legal perspective, on passing off the Judgment contains a clear explanation of the Judge’s decision on the facts that Associated had established the classic trinity of: (1) a reputation or goodwill in the name or title sued on; (2) a relevant misrepresentation; and (3) damage or real likelihood of it. On the trade mark case, the Judgment contains observations regarding the requirement that a registered trade mark should not be “devoid of any distinctive character”. In this respect Mr Justice Laddie disagreed with the Judgment of Mr Justice Jacob in an earlier High Court case (Nestle v Unilever [2002] EWHC 2709). The Judgment also addresses the scope of the specification of goods for a registered trade mark both in the context of a non-use validity attack and in the context of infringement under section 10(1) of the Trade Marks Act 1994.

Preliminary Points

Before addressing passing off, the Judge considered which titles Express Newspapers threatened to use. He concluded, on a balance of probabilities, that Evening Mail was the preferred title for the new publication even if no final decision had been taken and that London Evening Mail was likely to be the fall-back alternative. With regard to use of the title, The Mail, the Judge concluded that whether Express used London Evening Mail or Evening Mail as the full name of its newspaper, the staff would not infrequently refer to it as The Mail and that in the absence of a firm and rigorously enforced directive not to do so, that use would pass into the newspaper itself.

The Judge rejected an argument that the proceedings had been raised too early in that it was not known how Express would market its new publication. On the evidence, the manner of use threatened by Express newspapers was clear enough to determine whether there was an actionable threat to pass off.

Passing Off

Reputation and Goodwill in Daily Mail, The Mail on Sunday and The Mail

It was accepted that sales of the Daily Mail and The Mail on Sunday had been very large over a long period of time. The Judge concluded, on the evidence, that it was clear that retailers and members of the public referred to the Daily Mail and The Mail on Sunday newspapers as The Mail.

Express Newspapers did not accept: (1) that Associated Newspapers had any reputation in the title The Mail in relation to any type of newspaper; or (2) that Associated’s reputation in Daily Mail and The Mail on Sunday extended beyond sold, national newspapers to cover free, regional newspapers.

1. Protectable reputation in the words The Mail or Mail

Express Newspapers argued that the word “mail” was a non-distinctive term which indicated the nature of the relevant goods, namely newspapers. It referred to an entry in the Oxford English Dictionary under the word “mail” to the effect that it is “the name of a newspaper”. The Judge observed, however, that the Oxford English Dictionary extract described the word “mail” as the name of a newspaper, not a generic description for newspapers – “Newspapers are not referred to as “mails””. He concluded that all the evidence pointed to the expression The Mail being widely regarded as referring to a particular newspaper from a particular source.

Express Newspapers also ran a second related argument against the existence of a protectable reputation in The Mail or the word “mail” on the basis of a number of other regional newspapers on the market which contained the word “mail” in their title. The thrust of this argument was not that the word “mail” had therefore become descriptive but rather that, in light of these publications, the word “mail” had ceased to be capable of performing a trade mark function. As the Judge put it, “Familiarity has bred contempt”.

On this argument, the Judge observed that there is no requirement in the law of passing off that the Claimant’s reputation must be exclusive. If a newcomer adopts a mark which is employed by a number of competitors and thereby deceives the public, the newcomer harms each of the competitors. The Judge was careful to distinguish between a finding that such a group of traders could have protectable (albeit shared) reputations in their marks and the issue as to misrepresentation by the newcomer. Where a number of traders use a similar name, the Judge recognised that the public could become more discerning about small differences and it might therefore be more difficult to prove the requisite misrepresentation. As a matter of principle therefore the Judge decided that if Associated had a reputation in The Mail, Daily Mail and The Mail on Sunday as an indication of newspapers from a particular source, it would not be deprived of the right to protect that reputation by the existence of other reputations in other newspaper titles incorporating the word “mail”.

In any event, the Judge found that the Express argument also failed on its facts.

2. Reputation restricted to national newspapers which are sold

It was accepted that Associated’s reputation in The Mail, Daily Mail and The Mail on Sunday had been generated in relation to national newspapers sold to members of the public. The titles themselves however did not suggest that the reputation was limited only to national newspapers or to newspapers which are sold. With regard to the geographical distinction, the Judge referred to evidence that the Birmingham Evening Mail is referred to as The Mail in Birmingham, as is the North West Evening Mail in South Cumbria. In addition, there was evidence of confusion in Scotland between the Sunday Mail and The Mail on Sunday which had not been prevented by the different geographical spread of the two newspapers.

The Judge observed also that there was no material to suggest that the public would assume that a free newspaper could not be connected with a sold newspaper. For instance, Associated Newspapers sells the Evening Standard but also distributes a free newspaper, the Metro, both of which are widely available in the Londonarea. There was no material to suggest that Associated’s reputation in its titles was restricted to national, paid-for newspapers.

Misrepresentation

As the action had been brought pre-launch, there was no direct evidence from the market place on the impact of the Express proposed new newspaper. Express argued however that consumers would be discriminating in light of the existence of other newspapers with “mail” in their title. The difference between a free evening local newspaper and a national paid for daily would make confusion rare.

The Judge had concluded, however, that to the overwhelming majority in the Daily Mail and The Mail on Sunday heartland (where the Express newspaper was to be distributed), the only newspapers with “mail” in the title are the Daily Mail and The Mail on Sunday. The argument that the public would learn quickly to discriminate was undermined by evidence given by Express Newspapers that, in Scotland, confusion still occurs between the Sunday Mail and The Mail on Sunday although they have been on sale side by side for 20 years.

The Judge concluded that a significant level of confusion was likely. This would be the case even if Express were to use London Evening Mail rather than Evening Mail as the title. As London is the capital of the country and its largest conurbation the Judge concluded that there was no reason why a reader would assume from that name in the title that it was “a little local newspaper run by a provincial newspaper company which had nothing to do with the publisher of national daily papers”.

Damage

The Judge found that there was no realistic prospect that a significant number of readers would take the Express newspaper in the belief that they were receiving the Daily Mail or The Mail on Sunday. He also rejected the suggestion that there would be a direct loss of advertising revenue caused by advertisers placing advertisements in the Express newspaper believing it to be an Associated Newspapers paper. Nevertheless, having heard evidence regarding for example the strong political and other views expressed through the parties’ respective newspapers and the possibility that the Evening Mail might carry advertisements for adult chat-lines and massage parlours (material which would not be accepted for inclusion in either of Associated’s Mail newspapers), the Judge concluded that Associated had established an appreciable risk of significant, though indirect, damage sufficient to make out its case in passing off.

Trade Marks Issues

Validity of Trade Mark Registration – THE MAIL

Express Newspapers attacked THE MAIL trade mark registration on a number of grounds, all of which were rejected. The non-use attack and an argument based on lack of distinctive character are considered below.

Express argued, among other things, that THE MAIL registration was devoid of the requisite distinctive character. It referred to an unreported decision of The High Court (Nestle -v- Unilever [2002] EWHC 2709) relating to Nestle’s trade mark rights in the shape of its famous Viennetta ice cream. In that case, Mr Justice Jacob said:

“There is another, quite different reason why I do not regard the shape alone as having been established as a trade mark.. It is not sufficiently distinctive. I revert back to the fact that 15% thought that one or more ice cream products were Viennetta. A trade mark must, in principle, be a unique identifier - denoting one trader and none other. If it is shown that it mainly so acts but also denotes, or may denote, others to a lesser but nonetheless substantial degree, then I think:

- It is not capable of distinguishing Art 3(1)(a) [Trade Marks Act 1994]

- It is “devoid of distinctive character” Art 3(1)(b)

- It has “not acquired a distinctive character”.”

Express argued therefore that THE MAIL must be a unique identifier and that, like Viennetta, it failed on this count because of the number of newspapers which incorporated the word “mail” in their title.

This argument prompted the Judge to consider the ruling in Nestle and comment that it appeared difficult to reconcile with other provisions of the Trade Marks Act 1994. First, there appeared to be a misquotation of the relevant legislation. Section 3(1)(b) prohibits registration of trade marks which are devoid of “any” distinctive characters (the word “any” having been omitted in the Nestle passage). Mr Justice Laddie commented that he had difficulty in seeing how a sign which had trade mark significance to 85% of the relevant public could be said to be devoid of any distinctive character. He also referred to the provisions in the Trade Marks Act contemplating the co-existence of competing rights in the same mark such as provisions for allowing registration in situations of honest concurrent use. In such cases there could not be a unique identifier. In any event, although this raised an interesting point of law, the Judge noted that he did not need to resolve it because there was no evidence that, taken across the length and the breadth of the United Kingdom, the mark THE MAIL was not overwhelmingly distinctive in a trade mark sense of the Claimant. He accepted that there may be areas, such as Birmingham, where the trade mark significance is shared with another trader. This would not, however, result in invalidity but simply the possibility that the other trader may be able to register its mark on the basis of honest concurrent use and rely on section 11(3) in defence to an infringement action.

The Judge found that the Express invalidity argument based on non-use failed on the facts. There was a discussion in particular in relation to The Mail on Sunday newspaper. In this publication the Judge observed that the words “The” and “Mail” are used very prominently as the trade mark, with the words “on Sunday” underneath in a much smaller and less prominent font. Express conceded that this constituted genuine use of the mark but that it was only use relating to a national Sunday newspaper sold to members of the public. It argued therefore that the registration should be restricted to “for sale national Sunday newspapers” and should be revoked as invalid for non-use for all other types of newspaper including free evening newspapers distributed in the Londonarea.

The Judge rejected this argument. He referred to the Court of Appeal decision in Thomson Holidays v Norwegian Cruise Line ([2003] IP&T 299) addressing the way in which a court can restrict the classification of goods to meet a non-use attack. Considering the classification of goods for THE MAIL mark, “Newspapers for sale in England and Wales only” and applying the guidance given in Thomson Holidays, the Judge concluded that even if the only use of the mark had been use of The Mail on The Mail on Sunday, it would not have been appropriate to restrict the classification to Sunday newspapers. He did not regard this as a sufficiently separate category of newspapers from those sold during the week.

Infringement

The Judge found that use by the Defendant of either Evening Mail or London Evening Mail as the title of its newspaper would amount to infringement of THE MAIL trade mark registration under section 10(2) of the Trade Marks Act.

Similarly, the Judge found that, looked at globally, use of the title Evening Mail would infringe both Associated’s DAILY MAIL and THE MAIL ON SUNDAY registrations. He was not, however, persuaded that the same would hold true if the title used were London Evening Mail. Although expressed with “considerable hesitation”, the Judge came to the conclusion that the likelihood of confusion for trade mark infringement purposes had not been made out and that therefore the London Evening Mail back-up title would not infringe either the DAILY MAIL or THE MAIL ON SUNDAY registrations.

Although somewhat academic in light of the decision on infringement under section 10(2), Express Newspapers did, however, make out its defence to the claim under Section 10(1) on the basis that its proposed newspaper was to be free and was not therefore identical goods to “newspapers for sale” as in the specification of goods for THE MAIL mark.

Associated argued that a purposive construction should be adopted. At the relevant date customers would not draw a distinction between sale and distribution of a newspaper and the words “for sale” should therefore be construed to cover distribution as well as sale for money. The Judge, however, did not think it permissible to downplay the significance of the word “sold” in the specification of goods. He commented that it is open to the proprietor to specify the class of goods to be covered by the mark by reference to the channels of distribution by which products bearing it reach the market. This was the case here. A less restricting definition could but had not been used. The Judge concluded that the goods were not identical and there was no infringement under Section 10(1).

Conclusion

The case demonstrates that a newspaper can have a protectable reputation and goodwill in the short form of its title and can enforce its rights against competitors. It also demonstrates that in appropriate circumstances the wheels of justice in the UKcan move quickly – in this case the trial was heard about 2½ months after proceedings were launched.

This may not, however, be an end to the matter, as Express Newspapers has been granted permission to appeal to the Court of Appeal.

Also published in the xxxxx 2003 edition of WIPR.