BattlingfortheTitle

22 August 2003

Anna Duffus

The newspaper publishing industry is highly competitive. If newspaper groups are not swooping in on each other's staff, they're getting involved in price wars in a constant battle over readers and advertisers. A recent court battle between Associated Newspapers and Express Newspapers addressed the extent to which a national newspaper brand may be protected and enforced.

Associated Newspapers, which owns the Daily Mail and The Mail on Sunday was unhappy about a proposed launch by Express Newspapers, which owns The Daily Express and the Sunday Express.

The launch was positioned as a free evening paper in the London area, which was to be called the Evening Mail or London Evening Mail. Associated claimed that the proposed launch would amount to passing off and trade mark infringement, as a result of its common law and registered trade mark rights in The Mail, Daily Mail and The Mail on Sunday.

On 11 June 2003 the High Court ruled in favour of Associated. 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, partly because it demonstrated success in enforcing the common law rights which a national newspaper may have in the shortened form of its name (in this case, The Mail) and partly because of the result which prevented Express Newspapers from launching its proposed free London newspaper under the title Evening Mail (a title which Express accepted was provocative to Associated).

Passing off

On passing off, the Judge's decision was based on the fact 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 a real likelihood of it.

One argument run by Express Newspapers against the existence of a protectable reputation in The Mail or the word “mail” was based on the existence of a number of other regional newspapers on the market which contained the word “mail” in their title. The thrust of this argument was 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. Such a group of competing traders could have protectable (albeit shared) reputations in their marks (although the Judge recognised that, where a number of traders use a similar name, 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 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". The Judge found that the Express argument in this respect also failed on its facts.

Trade mark issues

Express Newspapers attacked The Mail trade mark registration on a number of grounds, all of which were rejected. One argument was that The Mail registration was devoid of the requisite distinctive character. Express referred to the Viennetta case (Nestle versus Unilever) in which the Judge said that he did not consider the shape of the Viennetta ice cream as sufficiently distinctive because 15% of consumers surveyed thought one or more other ice creams were Viennetta.

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.

The Judge 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 which allow 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. On infringement, the judge found that use by Express of the Evening Mail as the title of its newspaper would amount to infringement of The Mail, Daily Mail and The Mail on Sunday registrations under section 10(2) of the Trade Marks Act. In relation to the London Evening Mail back-up title, he decided that its use would infringe The Mail trade mark registration but not the other two registrations.

The case demonstrates that a newspaper can have a protectable reputation and goodwill in the shortened form of its title and can enforce its rights against competitors. This may not, however, be an end to the matter as Express Newspapers have been granted permission to appeal to the Court of Appeal.

First published in the August 2003 edition of Brand Strategy.