Associated Newspapers keeps exclusive right to MAIL newspapers

In Associated Newspapers Limited v Express Newspapers, the High Court has issued an injunction restraining the defendant from using the titles Evening Mail and London Evening Mail for its proposed free newspaper. The court held that use of these titles would (i) infringe the plaintiff's rights in its THE MAIL, DAILY MAIL or THE MAIL ON SUNDAY marks, and (ii) amount to passing off.

Associated Newspapers sought an injunction preventing Express Newspapers from using the titles Evening Mail and London Evening Mail for a new, free London evening newspaper. Associated contended that use of these titles would constitute passing off and infringement of its trademarks THE MAIL, DAILY MAIL or THE MAIL ON SUNDAY. Express counterclaimed for revocation of THE MAIL on the grounds of invalidity.

Express relied on Justice Jacob's decision in Société de Produits Nestlé SA v Unilever plc (the Vienetta Case), in which it was held that the shape of Vienetta ice cream had not become distinctive through use as survey evidence showed that 15% of consumers thought other ice cream products were Vienetta. Jacob's reasoning suggested that a trademark must be a unique identifier. Express contended that if evidence that 15% of people were unlikely to identify the correct trademark owner was enough to demonstrate that the mark was not sufficiently distinctive to be registered, the THE MAIL mark should also fail because a number of other newspapers use the word 'mail' in their titles. It was likely, said Express, that a significant number of people would fail to link the THE MAIL mark with Association.

Its response to the passing off claim was along similar lines. The fact that these other publications use the term 'mail' in their titles, said Express, defeated the mark's power as a source indicator for Association's newspapers.

The High Court's Justice Laddie did not accept these arguments stating that there is no requirement in the law of passing off that the claimant's reputation has to be exclusive. He noted that use of a term or mark by a large number of traders may make it harder to prove misrepresentation, as the public may become more discerning about small differences between the marks, but this was not the same as saying that the traders would not have protectable reputations in their marks. Laddie also held that Express's passing off argument failed on the facts.

Turning to the Express's claims that the THE MAIL mark was invalid, Laddie commented that he had difficulty in seeing how a sign that has trademark significance to 85% of the relevant public can be devoid of any distinctive character. He held that there was no evidence that THE MAIL is not distinctive.

On the question of infringement, Laddie concluded that the proposed title Evening Mail would infringe the marks THE MAIL, DAILY MAIL and THE MAIL ON SUNDAY. Whereas, London Evening Mail would infringe the mark THE MAIL but not the other two marks.

Express has been granted permission to appeal to the Court of Appeal.

For a discussion of the Viennetta Case see Court turns to ECJ for guidance in VIENNETTA shape mark battle.

Adrian Chalkley, Bird & Bird, London